Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
`ESTTA1147952
`07/20/2021
`
`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
`
`Topco Holdings, Inc.
`
`Corporation
`
`Citizenship
`
`Illinois
`
`150 NORTHWEST POINT BOULEVARD
`ELK GROVE VILLAGE, IL 60007
`UNITED STATES
`
`Attorney informa-
`tion
`
`KAREN S. FRANK
`COBLENTZ PATCH DUFFY & BASS LLP
`ONE MONTGOMERY STREET, SUITE 3000
`SAN FRANCISCO, CA 94104
`UNITED STATES
`Primary Email: tm@cpdb.com
`Secondary Email(s): mdallas@coblentzlaw.com, kyepez@coblentzlaw.com,
`cwiener@coblentzlaw.com, kfrank@coblentzlaw.com
`415-391-4800
`
`Docket Number
`
`Applicant Information
`
`Application No.
`
`88151331
`
`Publication date
`
`06/22/2021
`
`Opposition Filing
`Date
`
`Applicant
`
`07/20/2021
`
`Opposition Peri-
`od Ends
`
`07/22/2021
`
`GONZALEZ ALONSO, GABRIELA
`1450 SUTTER #105
`SAN FRANCISCO, CA 94109
`UNITED STATES
`
`Goods/Services Affected by Opposition
`
`Class 035. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Business administration and manage-
`ment;Business management; Sample distribution
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`Dilution by blurring
`
`Dilution by tarnishment
`
`Trademark Act Sections 2 and 43(c)
`
`Trademark Act Sections 2 and 43(c)
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`
`1436130
`
`Application Date
`
`06/07/1985
`
`

`

`No.
`
`Registration Date
`
`04/14/1987
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`TOP CARE
`
`NONE
`
`Class 003. First use: First Use: 1985/05/08 First Use In Commerce: 1985/05/08
`SHAMPOO, HAIR RINSE, TOOTHPASTE, DENTURE CLEANSERS, SHAVING
`CREAM, HAIR SPRAY, MOUTHWASH, BODY LOTION, BODY POWDER,
`HAIR CONDITIONER, BATH OIL, NAIL POLISH REMOVER, DISPOSABLE
`WIPES IMPREGNATED WITH CLEANING LOTION, DEODORANT FOR PER-
`SONAL USE, RUBBING ALCOHOL, COTTON BALLS, WITCH HAZEL, COT-
`TON SWABS, AND COSMETIC PUFFS
`Class 005. First use: First Use: 1985/05/08 First Use In Commerce: 1985/05/08
`PHARMACEUTICALS, HEALTHCARE PREPARATIONS AND DIETARY SUP-
`PLEMENTS, NAMELY, MERBROMIN USED AS A LOCAL ANTISEPTIC AND
`GERMICIDE, PEROXIDE, LIQUID ANTACID, ANALGESICS, COLD CAP-
`SULES, LAXATIVE SUPPOSITORIES, NATURAL VEGETABLE POWDER,
`VITAMINS, ZINC OXIDE OINTMENT, EPSOM SALTS, THIMEROSOL, FABRIC
`BANDAGES, PLASTIC BANDAGES,STRETCH GAUZE BANDAGES, ADHES-
`IVE TAPE FOR MEDICAL PURPOSES, ASPIRIN, ACETAMINOPHEN, CALAM-
`INE LOTION, SINUS TABLETS, NASAL SPRAY, CITRATE OF MAGNESIA
`USED AS A LAXATIVE, L-LYSINE, PETROLEUM JELLY, IODINE, MINERAL
`OIL, CASTOR OIL, APPETITE SUPPRESSANTS, LECITHIN, BETA
`CAROTENE, AND BREWER'S YEAST SOLD AS A DIETARY SUPPLEMENT
`Class 010. First use: First Use: 1985/05/08 First Use In Commerce: 1985/05/08
`DENTAL FLOSS
`Class 016. First use: First Use: 1985/05/08 First Use In Commerce: 1985/05/08
`DISPOSABLE PAPER DIAPERS
`Class 021. First use: First Use: 1985/05/08 First Use In Commerce: 1985/05/08
`TOOTHBRUSHES
`
`U.S. Registration
`No.
`
`1749802
`
`Registration Date
`
`02/02/1993
`
`Application Date
`
`06/08/1992
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`TOP CARE
`
`NONE
`
`Class 005. First use: First Use: 1991/01/07 First Use In Commerce: 1991/01/07
`incontinence garments
`
`U.S. Registration
`No.
`
`1750009
`
`Registration Date
`
`02/02/1993
`
`Word Mark
`
`Design Mark
`
`TOP CARE
`
`Description of
`
`NONE
`
`Application Date
`
`06/08/1992
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Mark
`
`Goods/Services
`
`Class 010. First use: First Use: 1991/01/07 First Use In Commerce: 1991/01/07
`incontinence sheets
`
`U.S. Registration
`No.
`
`1846816
`
`Registration Date
`
`07/26/1994
`
`Application Date
`
`08/23/1993
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`TOP CARE
`
`NONE
`
`Class 025. First use: First Use: 1990/06/07 First Use In Commerce: 1990/06/07
`insoles
`
`U.S. Registration
`No.
`
`2066247
`
`Registration Date
`
`06/03/1997
`
`Application Date
`
`07/31/1995
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`TOP CARE
`
`NONE
`
`Class 003. First use: First Use: 1995/06/30 First Use In Commerce: 1995/06/30
`[breath freshener spray]
`Class 005. First use: First Use: 1995/06/30 First Use In Commerce: 1995/06/30
`pharmaceuticals, healthcare preparations and dietary supplements, namely first
`aid kits for domestic use, antacid tablets, caffeine tablets, antibiotic ointment,
`astringent, muscle rub, wart remover,acne pads impregnated with acne medica-
`tion, acne medication, hydrocortisone cream, anti-fungal medication, anti-itch
`spray, boric acid ointment, cough medicine, sore throat spray and lozenges, al-
`lergy medication, laxative tablets, enema kits, anti-diarrhea medicine, eye drops,
`drink mix for use as a meal replacement, feminine hygiene pads, tampons, di-
`aper rash ointment, teething pain gel, pediatric electrolyte liquid, gauze pads,
`sleeping pills, decongestant elixir, douches,alcohol pads, medical adhesive tape,
`cotton for medical purpose, lubricating jelly, eucalyptol ointment, instant pain re-
`lief liquid, arthritis pain rub, hemorrhoidal medication, saline solution, eye wash,
`athlete's foot medication, vaginalcream, incontinence pads, glucose tablets, corn
`cushions and blood glucose tests
`Class 010. First use: First Use: 1995/06/30 First Use In Commerce: 1995/06/30
`chemically activated hot and cold packsfor medical use, lancets and dental
`toothpicks
`
`U.S. Registration
`No.
`
`2094906
`
`Registration Date
`
`09/09/1997
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`TOP CARE
`
`NONE
`
`Application Date
`
`08/21/1996
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Goods/Services
`
`Class 003. First use: First Use: 1993/02/28 First Use In Commerce: 1993/02/28
`non-medicated lip balm
`Class 005. First use: First Use: 1993/02/28 First Use In Commerce: 1993/02/28
`corn and callus removing preparation
`
`U.S. Registration
`No.
`
`2081588
`
`Registration Date
`
`07/22/1997
`
`Application Date
`
`08/21/1996
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`TOP CARE
`
`NONE
`
`Class 005. First use: First Use: 1993/04/12 First Use In Commerce: 1993/04/12
`lice treatment preparations, ibuprofen for use as an oral analgesic, effervescent
`pain relief mediation, eye drops, dental rinse, pregnancy test kits for home use
`
`U.S. Registration
`No.
`
`2125144
`
`Registration Date
`
`12/30/1997
`
`Application Date
`
`08/21/1996
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`TOP CARE
`
`NONE
`
`Class 003. First use: First Use: 1993/04/14 First Use In Commerce: 1993/04/14
`eye glass cleaner
`Class 010. First use: First Use: 1993/04/14 First Use In Commerce: 1993/04/14
`thermometers for medical purposes
`
`U.S. Registration
`No.
`
`6412809
`
`Registration Date
`
`07/06/2021
`
`Word Mark
`
`Design Mark
`
`TOPCARE
`
`Application Date
`
`06/22/2020
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 010. First use: First Use: 2013/01/13 First Use In Commerce: 2013/01/13
`Personal protective equipment (PPE), namely, sanitary masks for protection
`against viral infection
`
`

`

`U.S. Registration
`No.
`
`5852176
`
`Registration Date
`
`09/03/2019
`
`Word Mark
`
`Design Mark
`
`TOPCARE EVERYDAY
`
`Application Date
`
`07/19/2017
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 003. First use: First Use: 2018/02/01 First Use In Commerce: 2018/02/01
`Baby wipes; cotton balls for cosmetic purposes; cotton swabs for cosmetic pur-
`poses; non-medicated mouthwash and gargle;toothpaste; hair shampoos; hair
`conditioners; bar soap; shaving cream; shaving gel; lip balms; hand lotions;
`body lotions; sunblock lotions; nail polish; nail polish remover
`Class 008. First use: First Use: 2018/02/01 First Use In Commerce: 2018/02/01
`Razors; razor blades
`Class 021. First use: First Use: 2018/02/01 First Use In Commerce: 2018/02/01
`Toothbrushes; dental floss; dental tape
`
`U.S. Application
`No.
`
`90235348
`
`Application Date
`
`10/05/2020
`
`Registration Date
`
`NONE
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`TOPCARE EVERYDAY
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 008. First use: First Use: 2015/11/06 First Use In Commerce: 2015/11/06
`Manicure and Pedicure Set; Shave kit comprised of shaving blades with one
`Handle and two Cartridges; Shave Kit Refill comprised of four shaving blade
`cartridges; Razor for Men with Twin Blade, Razor for Women with Twin Blade
`Class 010. First use: First Use: 2015/12/29 First Use In Commerce: 2015/12/29
`Portable Pill Crusher, Portable Pill Cutter; Night Guard Rest, namely, holders
`
`

`

`specially adapted for mouth guards for medical purposes
`
`U.S. Application
`No.
`
`90492571
`
`Application Date
`
`01/27/2021
`
`Registration Date
`
`NONE
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`TOPCARE EVERYDAY
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 003. First use: First Use: 2016/12/05 First Use In Commerce: 2016/12/05
`Petroleum jelly for external cosmetic purposes; Shave gel for men; Sunscreen
`preparations; After Sun Cooling Gel; Astringent for sensitive skin for cosmetic
`purposes; Bath foams; Body Washes; Non-medicated feminine hygiene wash;
`Non-medicated Hand Soap; Bubble Bath; Non-medicated Hand Cream; Tooth
`Whitening preparations
`Class 005. First use: First Use: 2015/11/06 First Use In Commerce: 2015/11/06
`Eye care Drops; Eye Care Lens Sanitizing wipes; Contact lens cleaning solu-
`tions; Incontinence garments; Feminine Sanitary Napkins; Feminine Sanitary
`Napkin Panty Liner; Tampons; Medicated oils containing Vitamin E; Medicated
`cream containing Vitamin E; Hand-sanitizing preparations; Antibacterial Soaps
`Class 021. First use: First Use: 2015/11/06 First Use In Commerce: 2015/11/06
`Cotton Pad Exfoliating Rounds; Soap Saver Mesh; Exfoliating washcloth; Manu-
`al toothbrushes; Electric toothbrushes; Dental floss; Dental Picks
`
`U.S. Registration
`No.
`
`6295801
`
`Registration Date
`
`03/16/2021
`
`Word Mark
`
`Design Mark
`
`TOPCARE BEAUTY
`
`Application Date
`
`12/24/2018
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`NONE
`
`

`

`Goods/Services
`
`Class 003. First use: First Use: 2019/07/05 First Use In Commerce: 2019/07/05
`Face lotion, body lotion, nail polish remover, hair mousse, hair spray, hair sham-
`poo, hair conditioner
`Class 008. First use: First Use: 2019/09/20 First Use In Commerce: 2019/09/20
`Tweezers; foot care implements, namely,foot files; callus reducers in the nature
`of callus cutters; makeup wedges, eyebrow scissors; nail files; nail scissors; nail
`buffers; cuticle pushers
`Class 018. First use: First Use: 2019/05/31 First Use In Commerce: 2019/05/31
`Travel bags
`Class 021. First use: First Use: 2019/04/29 First Use In Commerce: 2019/04/29
`Tooth brush holders; hair combs; hair brushes; travel sized containers for medic-
`ations for personal use, for lotions sold empty for domestic use; soap boxes;
`bath sponges; bath products, namely, loofah sponges; bath brushes; makeup
`wedges in the nature of facial sponges used forapplying makeup
`Class 024. First use: First Use: 2020/02/02 First Use In Commerce: 2020/02/02
`Bath gloves
`Class 025. First use: First Use: 2019/04/29 First Use In Commerce: 2019/04/29
`Shower caps; sleep shades in the natureof sleep masks
`
`U.S. Registration
`No.
`
`5716471
`
`Registration Date
`
`04/02/2019
`
`Word Mark
`
`Design Mark
`
`TOPCARE HEALTH
`
`Application Date
`
`07/19/2017
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 005. First use: First Use: 2018/04/01 First Use In Commerce: 2018/04/01
`Aspirin; ibuprofen for use as an oral analgesic; acetaminophen for relief of pain;
`antacids; sanitary napkins; tampons;cough syrup; analgesics; first aid kits;
`smoking cessation preparations; sleep aid preparations; analgesic balm; contact
`lens disinfectants; cold medicine; sinus medicine; allergy medicine; decongest-
`ants; cough lozenges; hemorrhoid preparations; adhesive bandages
`Class 010. First use: First Use: 2018/04/01 First Use In Commerce: 2018/04/01
`Fever thermometers; elastic bandages
`
`U.S. Registration
`No.
`
`4832501
`
`Registration Date
`
`10/13/2015
`
`Application Date
`
`11/26/2013
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`TIPPY TOES ORGANIC BY TOP CARE
`
`

`

`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 005. First use: First Use: 2014/08/00 First Use In Commerce: 2014/08/00
`Organic baby food
`
`U.S. Registration
`No.
`
`4606048
`
`Registration Date
`
`09/16/2014
`
`Application Date
`
`08/16/2012
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`TIPPY TOES BY TOP CARE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 032. First use: First Use: 2013/10/00 First Use In Commerce: 2013/10/00
`Infant drinking water
`
`U.S. Registration
`No.
`
`4606050
`
`Registration Date
`
`09/16/2014
`
`Application Date
`
`08/17/2012
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`TIPPY TOES BY TOP CARE
`
`

`

`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 021. First use: First Use: 2013/10/00 First Use In Commerce: 2013/10/00
`Training cups, baby dinnerware including plates, cups, and bowls
`
`U.S. Registration
`No.
`
`4606051
`
`Registration Date
`
`09/16/2014
`
`Application Date
`
`08/17/2012
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`TIPPY TOES BY TOP CARE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 010. First use: First Use: 2013/10/00 First Use In Commerce: 2013/10/00
`Thermometers for medical purposes, babybottles, baby bottle nipples, pacifiers,
`teething rings
`
`U.S. Registration
`No.
`
`4419678
`
`Registration Date
`
`10/15/2013
`
`Application Date
`
`08/17/2012
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`TIPPY TOES BY TOP CARE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 005. First use: First Use: 2013/03/00 First Use In Commerce: 2013/03/00
`Baby food, baby formula, ointment for the treatment and prevention of diaper
`rash and skin irritations
`
`U.S. Registration
`No.
`
`4685128
`
`Registration Date
`
`02/10/2015
`
`Application Date
`
`08/17/2012
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Word Mark
`
`Design Mark
`
`TIPPY TOES BY TOP CARE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 2013/10/00 First Use In Commerce: 2013/10/00
`Electric outlet covers
`
`Related Proceed-
`ings
`
`91269124
`
`Attachments
`
`90013975#TMSN.png( bytes )
`87534561#TMSN.png( bytes )
`90235348#TMSN.png( bytes )
`90492571#TMSN.png( bytes )
`88240745#TMSN.png( bytes )
`87534567#TMSN.png( bytes )
`86129354#TMSN.png( bytes )
`85705036#TMSN.png( bytes )
`85706571#TMSN.png( bytes )
`85706574#TMSN.png( bytes )
`85706581#TMSN.png( bytes )
`85706576#TMSN.png( bytes )
`21-07-20 TopCo Notice of Opposition - TOP CARE STORE.pdf(134876 bytes )
`
`Signature
`
`Name
`
`Date
`
`/Karen S. Frank/
`
`Karen S. Frank
`
`07/20/2021
`
`

`

`
`
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`
`TOPCO HOLDINGS, INC.,
`
`Opposer,
`
`
`
`
`
`v.
`
`
`
`GABRIELA GONZALEZ ALONSO,
`
`Applicant.
`
`
`
`
`
`
`
`TOP CARE STORE
`88/151,331
`October 11, 2018
`June 22, 2021
`
`
`) Opposition No.
`)
`) Mark:
`) Serial No.
`) Filed:
`) Published:
`)
`)
`)
`)
`
`
`NOTICE OF OPPOSITION
`
`
`
`Opposer Topco Holdings, Inc. ("Opposer"), organized and existing under the laws of the
`
`State of Wisconsin, and having its principal place of business at 150 Northwest Point Boulevard,
`
`Elk Grove Village, Illinois, believes it will be damaged by registration of the mark sought to be
`
`registered in Application Serial No. 88/151,331, published in the Official Gazette on June 22,
`
`2021, and hereby opposes the same.
`
`
`
`As grounds for opposition, Opposer alleges:
`
`THE TOP CARE TRADEMARKS
`
`1.
`
`Opposer is the largest grocer-owned purchasing cooperative in the United States.
`
`Opposer leverages the collective purchasing power of its member businesses to negotiate
`
`discounts with manufacturers, distributors and other vendors. Opposer provides household,
`
`grocery, cosmetic, pet supplies and many other branded products to its large network of
`
`supermarket retailers, food wholesalers and foodservice companies. Opposer's branded products
`
`have thus appeared before millions of consumers across the nation.
`
`4821-0383-8962.1
`
`-1-
`
`

`

`
`
`2.
`
`Opposer's brand portfolio covers an expansive breadth of products such as health
`
`and wellness, toddler and childcare, food, household supplies, and pet care products. Popular
`
`brands owned by Opposer include, among others, TOP CARE, SIMPLY DONE, FULL CIRCLE
`
`MARKET, FOOD CLUB, CRAV’N FLAVOR, CULINARY TOURS and PAWS HAPPY
`
`LIFE.
`
`3.
`
`Opposer is the owner of the following United States trademark registrations and
`
`applications for TOP CARE and TOPCARE MARKS (collectively, the "TOP CARE Marks"):
`
`A. TOP CARE
`
`a. Registration No. 1,436,130 for shampoo, hair rinse, hair conditioner,
`
`toothpaste, denture cleansers, shaving cream, hair spray, mouthwash, body
`
`lotion, body powder, bath oil, nail polish remover, disposable wipes
`
`impregnated with cleaning lotion, deodorant for personal use, rubbing
`
`alcohol, cotton balls, witch hazel, cotton swabs, and cosmetic puffs in Class
`
`3; pharmaceuticals, healthcare preparations and dietary supplements,
`
`namely, merbromin used as a local antiseptic and germicide, thimerosol,
`
`petroleum jelly, peroxide, liquid antacid, analgesics, aspirin,
`
`acetaminophen, cold capsules, sinus tablets, nasal spray, laxative
`
`suppositories, natural vegetable powder, citrate of magnesia used as a
`
`laxative, vitamins, zinc oxide ointment, epsom salts, fabric bandages,
`
`plastic bandages, stretch gauze bandages, adhesive tape for medical
`
`purposes, calamine lotion, sinus tablets, nasal spray, l-lysine, iodine,
`
`mineral oil, castor oil, appetite suppressants, lecithin, beta carotene, and
`
`brewer's yeast sold as a dietary supplement, in Class 5; Dental floss in Class
`
`10; paper diapers in Class 16; and toothbrushes in Class 21;
`
`4821-0383-8962.1 893319V1
`
`NOTICE OF OPPOSITION
`
`-2-
`
`

`

`
`
`b. Registration No. 1,749,802 for incontinence garments in Class 5;
`
`c. Registration No. 1,750,009 for incontinence sheets in Class 10;
`
`d. Registration No. 1,846,816 for insoles in Class 25;
`
`e. Registration No. 2,066,247 for first aid kits for domestic use, antacid
`
`tablets, caffeine tablets, antibiotic ointment, astringent, muscle rub, wart
`
`remover, hydrocortisone cream, anti-fungal medication, anti-itch spray,
`
`boric acid ointment, acne pads impregnated with acne medication, acne
`
`medication, cough medicine, sore throat spray and lozenges, allergy
`
`medication, decongestant elixir, laxative tablets, enema kits, anti-diarrhea
`
`medicine, eye drops, drink mix for use as a meal replacement, feminine
`
`hygiene pads, tampons, vaginal cream, diaper rash ointment, teething pain
`
`gel, pediatric electrolyte liquid, gauze pads, medical adhesive tape, sleeping
`
`pills, douches alcohol pads, cotton for medical purpose, lubricating jelly,
`
`eucalyptol ointment, instant pain relief liquid, arthritis pain rub,
`
`hemorrhoidal medication, saline solution, eye wash, athlete's foot
`
`medication, incontinence pads, glucose tablets, and blood glucose tests, and
`
`corn cushions in Class 5; and chemically activated hot and cold packs for
`
`medical use, lancets and dental toothpicks in Class 10;
`
`f. Registration No. 2,094,906 for non-medicated lip balm, in class 3 and corn
`
`and callus removing preparation, in Class 5;
`
`g. Registration No. 2,081,588 for lice treatment preparations, ibuprofen for use
`
`as an oral analgesic, effervescent pain relief mediation, eye drops, dental
`
`rinse, and pregnancy test kits for home use in Class 5;
`
`4821-0383-8962.1 893319V1
`
`NOTICE OF OPPOSITION
`
`-3-
`
`

`

`
`
`h. Registration No. 2,125,144 for eyeglass cleaner in Class 3 and
`
`thermometers for medical purposes in Class 10; and
`
`i.
`
` Application Serial No. 90/013,975 (Approved) for personal protective
`
`equipment (PPE), namely, sanitary masks for protection against viral
`
`infection in Class 10.
`
`B. TOPCARE EVERYDAY
`
`a. Registration No. 5,852,176 for baby wipes, cotton balls for cosmetic
`
`purposes, cotton swabs for cosmetic purposes, non-medicated mouthwash
`
`and gargle, toothpaste, hair shampoos, hair conditioners, bar soap, shaving
`
`cream, shaving gel, lip balms, hand lotions, body lotions, sunblock lotions,
`
`nail polish, nail polish remover in Class 4; razors and razor blades in Class
`
`8; toothbrushes, dental floss, and dental tape in Class 21.
`
`b. Application Serial No. 90/235,348 (Pending) for manicure and pedicure
`
`set, shave kit comprised of shaving blades with one handle and two
`
`cartridges, shave kit refill comprised of four shaving blade cartridges, razor
`
`for men with twin blade, razor for women with twin blade in class 8; night
`
`guard rest, namely, holders specially adapted for mouth guards in class 9;
`
`portable pill crusher, and cutter in class 10.
`
`c. Application Serial No. 90/492,571 (Pending) for Petroleum jelly for
`
`external cosmetic purposes; Shave gel for men; Sunscreen preparations;
`
`After Sun Cooling Gel; Astringent for sensitive skin for cosmetic purposes;
`
`Bath foams; Body Washes; Non-medicated feminine hygiene wash; Non-
`
`medicated Hand Soap; Bubble Bath; Non-medicated Hand Cream; Tooth
`
`Whitening preparations in Class 3; Eye care Drops; Eye Care Lens
`
`4821-0383-8962.1 893319V1
`
`NOTICE OF OPPOSITION
`
`-4-
`
`

`

`
`
`Sanitizing wipes; Contact lens cleaning solutions; Incontinence garments;
`
`Feminine Sanitary Napkins; Feminine Sanitary Napkin Panty Liner;
`
`Tampons; Medicated oils containing Vitamin E; Medicated cream
`
`containing Vitamin E; Hand-sanitizing preparations; Antibacterial Soaps in
`
`class 5; Cotton Pad Exfoliating Rounds; Soap Saver Mesh; Exfoliating
`
`washcloth; Manual toothbrushes; Electric toothbrushes; Dental floss; Dental
`
`Picks in Class 21.
`
`C. TOPCARE BEAUTY
`
`a. Registration No. 6,295,801for face lotion, body lotion, nail polish remover,
`
`hair mousse, hair spray, hair shampoo, hair conditioner in Class 3; tweezers;
`
`eyebrow scissors; foot care implements, namely, foot files; callus reducers
`
`in the nature of callus cutters; makeup wedges, nail files; nail scissors; nail
`
`buffers; cuticle pushers in Class 8; travel bags in Class 18; tooth brush
`
`holders, hair combs, hair brushes, travel sized containers for medications for
`
`personal use, for lotions sold empty for domestic use, soap boxes, bath
`
`sponges, loofah sponges, bath brushes, makeup wedges in the nature of
`
`facial sponges used for applying makeup in Class 21; bath gloves in Class
`
`24; and shower caps and sleep masks in Class 25.
`
`D. TOPCARE HEALTH
`
`a. Registration No. 5,716,471 for aspirin, ibuprofen for use as an oral
`
`analgesic, acetaminophen for relief of pain, analgesics, analgesic balm,
`
`antacids, sanitary napkins, tampons, cough syrup, cold medicine, sinus
`
`medicine, allergy medicine, decongestants, cough lozenges, first aid kits,
`
`4821-0383-8962.1 893319V1
`
`NOTICE OF OPPOSITION
`
`-5-
`
`

`

`
`
`smoking cessation preparations, sleep aid preparations, contact lens
`
`disinfectants, hemorrhoid preparations, and adhesive bandages in Class 5.
`
`E. TIPPY TOES ORGANIC BY TOP CARE
`
`a. Registration No. 4,832,501 for organic baby food in Class 5.
`
`F. TIPPY TOES BY TOP CARE
`
`a. Registration No. 4,606,048 for infant drinking water in Class 32.
`
`b. Registration No. 4,606,050 for training cups and baby dinnerware in Class
`
`21.
`
`c. Registration No. 4,606,051 for thermometers for medical purposes, baby
`
`bottles, nipples, pacifiers, teething rings in Class 10.
`
`d. Registration No. 4,419,678 for baby food, formula, and ointment for
`
`prevention of diaper rash in Class 5.
`
`e. Registration No. 4,685,128 for electric outlet covers in Class 9.
`
`f. Registration No. for nail clippers and scissors for babies, and spoons in
`
`Class 8.
`
`4.
`
`Opposer has used the TOP CARE Marks with its goods in commerce since at
`
`least as early as 1985. As a result of its extensive use of the TOP CARE Marks, Opposer has
`
`gained substantial goodwill in the TOP CARE Marks, and consumers identify the TOP CARE
`
`Marks with Opposer.
`
`5.
`
`Opposer's TOP CARE Marks share the "Top Care" phrase as a recognizable
`
`common characteristic. This common characteristic is distinctive and famous, and distinguishes
`
`Opposer's goods from other goods and services in the marketplace.
`
`6.
`
`Opposer's TOP CARE Marks have been used and advertised in promotional
`
`materials and everyday sales activity such across the nation that they create common exposure
`
`4821-0383-8962.1 893319V1
`
`NOTICE OF OPPOSITION
`
`-6-
`
`

`

`
`and thereafter recognition among the purchasing public so that the common phrase "Top Care" is
`
`itself indicative of a common origin of the goods.
`
`APPLICANT'S PROPOSED MARKS
`
`7.
`
`Applicant, Gabriela Gonzalez Alonso ("Applicant") seeks to register the TOP
`
`CARE STORE mark and design in Class 35 for "Business administration and management;
`
`Business management; Sample distribution." This application was filed on October 11, 2018,
`
`assigned Serial No. 88/151,331 and published on June 22, 2021.
`
`8. The design "consists of a pale pink bandage with white dots in the left side that forms a
`
`heart, and on the upper right side of the heart is colored by intense pink tones that blur from the
`
`center to the edge and a shadow of dark pink in the right side. Under the heart, the words 'Top
`
`Care Store' in deep pink color."
`
`FIRST GROUND FOR OPPOSITION
`
`
`
`(Likelihood of Confusion under Section 2(d) of the Lanham Act)
`
`9.
`
`Opposer incorporates and re-alleges as if fully set forth herein the allegations
`
`contained in paragraphs 1-8 of this Notice of Opposition.
`
`10.
`
`Applicant's proposed TOP CARE STORE designation encompasses the TOP
`
`CARE element of Opposer's TOP CARE Marks in its entirety.
`NOTICE OF OPPOSITION
`4821-0383-8962.1 893319V1
`
`-7-
`
`

`

`
`
`11.
`
`Beyond the literal identity between Applicant's proposed mark and Opposer's
`
`TOP CARE Marks, Applicant's proposed design also prominently features a bandage element
`
`encompassing goods and services used by Opposer. In particular, Opposer's prior use of the
`
`TOP CARE Marks includes goods and services relating to "fabric bandages, plastic bandages,
`
`stretch gauze bandages" (Registration No. 1,436,130); "first aid kits for domestic use," "gauze
`
`pads," and "medical adhesive tape" (Registration No. 2,066,247); "personal protective
`
`equipment" in pending Application Serial No. 90/013,975; and "adhesive bandages"
`
`(Registration No. 5,716,471).
`
`12.
`
`Opposer has used the TOP CARE Marks in connection with its goods since 1985.
`
`Thus, Opposer has priority over Applicant.
`
`13.
`
`Opposer is informed and believes, and on that basis alleges, that Applicant
`
`intended to adopt and commence using Applicant's proposed TOP CARE STORE marks in
`
`connection with its goods and services with knowledge of Opposer's prior use of Opposer's TOP
`
`CARE Marks.
`
`14.
`
`Opposer is informed and believes, and on that basis alleges, that the goods and
`
`services identified in the trademark application for TOP CARE STORE may be competitive,
`
`closely related to, and/or complementary with the goods and services Opposer provides under its
`
`TOP CARE Marks, such that purchasers and prospective purchasers would believe that
`
`Applicant's goods and services emanate from Opposer, and are affiliated with, or sponsored or
`
`endorsed by Opposer, when they are not.
`
`15.
`
`Applicant's proposed TOP CARE STORE designation is likely to cause
`
`confusion, mistake and deception in the marketplace.
`
`4821-0383-8962.1 893319V1
`
`NOTICE OF OPPOSITION
`
`-8-
`
`

`

`
`
`16.
`
`Applicant's proposed TOP CARE STORE designation is likely to cause
`
`confusion, or to cause mistake, or to deceive or disparage, by falsely suggesting a connection
`
`with or otherwise damaging Opposer.
`
`SECOND GROUND FOR OPPOSITION
`
`(Likelihood of Confusion of Family of Marks under Section 2(d) of the Lanham Act)
`
`17.
`
`Opposer incorporates and re-alleges as if fully set forth herein the allegations
`
`contained in paragraphs 1-16 of this Notice of Opposition.
`
`18.
`
`Applicant's proposed TOP CARE STORE designation encompasses the phrase
`
`"Top Care" that is part of Opposer's family of TOP CARE Marks.
`
`19.
`
` Beyond the literal identity between Applicant's proposed mark and Opposer's
`
`TOP CARE Marks, Applicant's proposed design also prominently features a bandage design
`
`element encompassing goods and services used by Opposer. In particular, Opposer's prior use of
`
`the TOP CARE Marks includes goods and services relating to "fabric bandages, plastic
`
`bandages, stretch gauze bandages" (Registration No. 1,436,130); "first aid kits for domestic use,"
`
`"gauze pads," and "medical adhesive tape" (Registration No. 2,066,247); "personal protective
`
`equipment" in pending Application Serial No. 90/013,975; and "adhesive bandages"
`
`(Registration No. 5,716,471).
`
`20.
`
`Opposer has used the TOP CARE Marks in connection with its goods since 1985.
`
`Thus, Opposer has priority over Applicant.
`
`21.
`
`Opposer is informed and believes, and on that basis alleges, that Applicant
`
`intended to adopt and commence using Applicant's proposed TOP CARE STORE marks in
`
`connection with its services with knowledge of Opposer's prior use of Opposer's TOP CARE
`
`Marks.
`
`4821-0383-8962.1 893319V1
`
`NOTICE OF OPPOSITION
`
`-9-
`
`

`

`
`
`22.
`
`Opposer is informed and believes, and on that basis alleges, that the goods and
`
`services identified in the trademark application for TOP CARE STORE may be competitive,
`
`closely related to, and/or complementary with the goods and services Opposer provides under its
`
`TOP CARE Marks, such that purchasers and prospective purchasers would believe that
`
`Applicant's goods and services emanate from Opposer, and are affiliated with, or sponsored or
`
`endorsed by Opposer, when they are not.
`
`23.
`
`Applicant's proposed TOP CARE STORE designation is likely to cause
`
`confusion, mistake and deception in the marketplace.
`
`24.
`
`Applicant's proposed TOP CARE STORE designation is likely to cause
`
`confusion, or to cause mistake, or to deceive or disparage, by falsely suggesting a connection
`
`with or otherwise damaging Opposer.
`
`THIRD GROUND FOR OPPOSITION
`
`(Dilution under Section 43(c) of the Lanham Act)
`
`25.
`
`Opposer incorporates and re-alleges as if fully set forth herein the allegations
`
`contained in paragraphs 1-24 of this Notice of Opposition.
`
`26.
`
`By virtue of Opposer's long, continuous, extensive and exclusive use, and
`
`extensive advertising, and promotion of goods under the TOP CARE Marks throughout the
`
`United States since 1985, the TOP CARE Marks have a high degree of consumer recognition,
`
`are widely recognized by the general consuming public of the United States as a designation of
`
`Opposer's goods and services, and are famous.
`
`27.
`
`Applicant's applications for TOP CARE STORE designation comes many years
`
`after Opposer's TOP CARE marks have become famous.
`
`4821-0383-8962.1 893319V1
`
`NOTICE OF OPPOSITION
`
`-10-
`
`

`

`
`
`28.
`
`Applicant's proposed TOP CARE STORE mark in interstate commerce in the
`
`advertising and promotion of its goods and services dilutes the distinctiveness, strength, and
`
`value of Opposer's TOP CARE Marks.
`
`29.
`
`Applicant's proposed TOP CARE STORE mark is likely to cause dilution by
`
`blurring or dilution by tarnishment of Opposer's TOP CARE Marks because the association
`
`created by Applicant's TOP CARE STORE mark will impair the distinctiveness of the famous
`
`TOP CARE Marks.
`
`30.
`
`Accordingly, Opposer requests that the proposed TOP CARE STORE mark be
`
`refused registration pursuant to 15 U.S.C. § 1125(c) and 15 U.S.C. § 1063.
`
`
`
`WHEREFORE, Opposer believes it will be damaged by registration of Applicant's TOP
`
`CARE STORE mark and design, and prays that this opposition be sustained and that Application
`
`Serial No. 88/151,331 be denied and that this Opposition be sustained in favor of Opposer.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`DATED: July 20, 2021
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`COBLENTZ, PATCH, DUFFY & BASS, LLP
`
`
`
`/s/ Karen S. Frank
`Karen S. Frank
`Attorneys for Opposer
`TOPCO HOLDINGS, INC.
`
`
`
`
`
`
`
`4821-0383-8962.1 893319V1
`
`NOTICE OF OPPOSITION
`
`-11-
`
`

`

`
`
`CERTIFICATE OF SERVICE
`
`
`
`This undersigned hereby certifies that the foregoing Notice of Opposition was served this
`
`20th day of July, 2021, on interested parties in this action as follows:
`
`
`VIA E-MAIL
`Nils H. Ljungman
`585 Rush Street, Suite 301
`Greensburg PA 15601
`nhla@earthlink.net
`appletreemx@gmail.com
`
`BY E-MAIL OR ELECTRONI