Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
`ESTTA Tracking number:
`ESTTA1248065
`11/15/2022
`
`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
`
`Attorney informa-
`tion
`
`Community Coffee Company, L.L.C.
`11/19/2022
`
`3332 PARTRIDGE LANE, BLDG. A
`BATON ROUGE, LA 70809
`UNITED STATES
`
`KATHRYN E. GARIPAY
`OLSON & CEPURITIS, LTD.
`20 NORTH WACKER DRIVE
`36TH FLOOR
`CHICAGO, IL 60606
`UNITED STATES
`Primary email: TMDocket@olsonip.com
`Secondary email(s): docket@olsonip.com, kgaripay@olsonip.com,
`aolson@olsonip.com
`312-580-1180
`
`Docket no.
`
`Applicant information
`
`Application no.
`Opposition filing
`date
`Applicant
`
`97000607
`11/15/2022
`
`Publication date
`Opposition period
`ends
`
`09/20/2022
`11/19/2022
`
`Kim, Jungyeol
`9645 HILLTOP ROAD
`BELLEVUE, WA 98004
`UNITED STATES
`Goods/services affected by opposition
`
`Class 043. First Use: None First Use In Commerce: None
`All goods and services in the class are opposed, namely: Coffee bars; Coffee shops
`
`Grounds for opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`Marks cited by opposer as basis for opposition
`
`U.S. registration
`no.
`Register
`
`227922
`
`Principal
`
`Application date
`
`03/18/1925
`
`

`

`Registration date
`
`05/17/1927
`
`Word mark
`Design mark
`
`COMMUNITY
`
`Foreign priority
`date
`
`NONE
`
`Description of
`mark
`Goods/services
`
`NONE
`
`Class 030. First use: First Use: Apr 1, 1919 First Use In Commerce: Apr 1, 1919
`COFFEE
`
`U.S. registration
`no.
`Register
`Registration date
`
`1322426
`
`Principal
`02/26/1985
`
`Application date
`
`03/28/1984
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`Design mark
`Description of
`mark
`Goods/services
`
`COMMUNITY
`
`NONE
`
`Class 030. First use: First Use: Oct 20, 1982 First Use In Commerce: Oct 21,
`1982
`Decaffeinated Coffee
`
`U.S. registration
`no.
`Register
`Registration date
`
`1084137
`
`Principal
`01/31/1978
`
`Application date
`
`08/17/1976
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`Design mark
`Description of
`mark
`Goods/services
`
`COMMUNITY
`
`NONE
`
`Class 029. First use: First Use: Mar 4, 1975 First Use In Commerce: Mar 24,
`1975
`NON-DAIRY CREAMER
`Class 030. First use: First Use: Mar 4, 1975 First Use In Commerce: Mar 24,
`1975
`COFFEE AND CHICORY, TEA, INSTANT COFFEE, INSTANT DECAFFEIN-
`ATED COFFEE, AND INSTANT TEA
`
`U.S. registration
`no.
`Register
`Registration date
`
`1493389
`
`Principal
`06/21/1988
`
`Word mark
`Design mark
`
`COMMUNITY
`
`Application date
`
`10/08/1987
`
`Foreign priority
`date
`
`NONE
`
`

`

`Description of
`mark
`Goods/services
`
`NONE
`
`Class 030. First use: First Use: 1980 First Use In Commerce: 1980
`TEA MIX WHICH CONTAINS INSTANT TEA, NATURAL LEMON FLAVOR,
`AND A SWEETNER
`
`U.S. registration
`no.
`Register
`Registration date
`
`1347706
`
`Principal
`07/09/1985
`
`Application date
`
`03/28/1984
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`Design mark
`Description of
`mark
`Goods/services
`
`COMMUNITY
`
`NONE
`
`Class 016. First use: First Use: Mar 20, 1975 First Use In Commerce: Mar 24,
`1975
`Paper Coffee Filters
`
`U.S. registration
`no.
`Register
`Registration date
`
`1494436
`
`Principal
`06/28/1988
`
`Application date
`
`10/08/1987
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`Design mark
`Description of
`mark
`Goods/services
`
`COMMUNITY
`
`NONE
`
`Class 030. First use: First Use: Jul 1979 First Use In Commerce: Jul 1979
`OFFICE COFFEE KITS CONSISTING OF COFFEE, SUGAR, NON-DAIRY
`CREAMER AND COFFEE FILTERS
`
`U.S. registration
`no.
`Register
`Registration date
`
`1493719
`
`Principal
`06/21/1988
`
`Application date
`
`10/08/1987
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`Design mark
`Description of
`mark
`Goods/services
`
`COMMUNITY
`
`NONE
`
`Class 042. First use: First Use: 1971 First Use In Commerce: 1971
`OFFICE COFFEE SERVICE WHICH INCLUDES RENTAL OF COFFEE-
`MAKERS AND SALES OF CUPS, HEATER PLATES, COFFEE, SWEATENER,
`STIR STICKS, NON-DAIRY CREAMER, AND COFFEE FILTERS
`
`U.S. registration
`no.
`Register
`Registration date
`
`5103073
`
`Principal
`12/20/2016
`
`Application date
`
`10/14/2015
`
`Foreign priority
`
`NONE
`
`

`

`Word mark
`Design mark
`
`COMMUNITY
`
`date
`
`Description of
`mark
`Goods/services
`
`U.S. registration
`no.
`Register
`Registration date
`
`Word mark
`Design mark
`Description of
`mark
`Goods/services
`
`U.S. registration
`no.
`Register
`Registration date
`
`Word mark
`Design mark
`Description of
`mark
`Goods/services
`
`NONE
`
`Class 021. First use: First Use: Aug 11, 1958 First Use In Commerce: Aug 11,
`1958
`BEVERAGE WARE; CUPS AND MUGS; PAPER CUPS; VACUUM BOTTLES
`
`1872655
`
`Application date
`
`11/02/1993
`
`Principal
`01/10/1995
`
`Foreign priority
`date
`COMMUNITY - CASH FOR SCHOOLS
`
`NONE
`
`NONE
`
`Class 029. First use: First Use: May 31, 1991 First Use In Commerce: May 31,
`1991
`non-dairy coffee creamers
`Class 030. First use: First Use: May 31, 1991 First Use In Commerce: May 31,
`1991
`coffee, tea, and sugar
`
`3641547
`
`Application date
`
`07/13/2006
`
`Principal
`06/23/2009
`
`Foreign priority
`date
`COMMUNITY CASH FOR SCHOOLS
`
`NONE
`
`NONE
`
`Class 036. First use: First Use: May 31, 1991 First Use In Commerce: May 31,
`1991
`CHARITABLE FUND RAISING SERVICES
`
`U.S. registration
`no.
`Register
`
`5034368
`
`Principal
`
`Application date
`
`06/18/2015
`
`

`

`Registration date
`
`Word mark
`Design mark
`Description of
`mark
`Goods/services
`
`09/06/2016
`
`Foreign priority
`date
`COMMUNITY COFFEE CASH FOR SCHOOLS
`
`NONE
`
`NONE
`
`Class 036. First use: First Use: Apr 23, 2015 First Use In Commerce: Apr 23,
`2015
`CHARITABLE FUND RAISING SERVICES
`
`U.S. registration
`no.
`Register
`Registration date
`
`3555674
`
`Principal
`01/06/2009
`
`Application date
`
`04/17/2007
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`Design mark
`Description of
`mark
`Goods/services
`
`COMMUNITY
`
`NONE
`
`Class 035. First use: First Use: Jan 26, 2007 First Use In Commerce: Jan 26,
`2007
`[ RETAIL SHOPS FEATURING COFFEE AND TEA]
`Class 043. First use: First Use: Jan 26, 2007 First Use In Commerce: Jan 26,
`2007
`COFFEE SHOPS
`
`U.S. registration
`no.
`Register
`Registration date
`
`5857579
`
`Principal
`09/10/2019
`
`Application date
`
`03/13/2019
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`Design mark
`Description of
`mark
`Goods/services
`
`COMMUNITY COFFEE
`
`NONE
`
`Class 030. First use: First Use: Sep 28, 1953 First Use In Commerce: Sep 28,
`1953
`COFFEE; TEA; SUGAR; OFFICE COFFEE KITS CONSISTING OF COFFEE,
`SUGAR, NON-DIARY CREAMER, AND COFFEE FILTERS
`
`U.S. application
`no.
`Registration date
`
`97385239
`
`NONE
`
`Application date
`
`04/27/2022
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`Design mark
`Description of
`mark
`Goods/services
`
`COMMUNITY COFFEE
`
`NONE
`
`Class 035. First use: First Use: Dec 11, 2003 First Use In Commerce: Dec 11,
`2003
`
`

`

`Online retail store services featuring coffee, tea, sugar, non-dairy creamer, cof-
`fee filters, beverage ware, mugs, and travel mugs
`
`Attachments
`
`71211235#TMSN.png( bytes )
`86787282#TMSN.png( bytes )
`Notice of Opposition to_Serial No 97000607.pdf(17453 bytes )
`Notice of Opposition to_Serial No 97000607_Exhibits 1-13.pdf(1841884 bytes )
`
`Signature
`Name
`Date
`
`/Kathryn E. Garipay/
`KATHRYN E. GARIPAY
`11/15/2022
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`IN THE MATTER OF APPLICATION SERIAL NO. 97/000,607
`PUBLISHED IN THE OFFICIAL GAZETTE OF SEPTEMBER 20, 2022
`
`Opposition No.
`
`: :
`
`:
`:
`:
`
`: :
`
`:
`
`COMMUNITY COFFEE COMPANY, L.L.C.,
`
`Opposer,
`
`v.
`
`JUNGYEOL KIM,
`
`Applicant.
`
`NOTICE OF OPPOSITION
`
`Community Coffee Company, L.L.C., a Louisiana limited liability company having an
`
`address of 3332 Partridge Lane, Bldg. A, Baton Rouge, Louisiana 70809, believes that it would
`
`be damaged by the registration of the 3C COFFEE COMMUNITY, CULTURE, AND
`
`COMFORT mark as shown in Application Serial No. 97/000,607 and published in the Official
`
`Gazette of September 20, 2022, and hereby opposes the same.
`
`As grounds for the opposition, it is alleged that:
`
`1.
`
`Opposer, Community Coffee Company, L.L.C. ("Community Coffee"), has for
`
`decades, and well before August 29, 2021, offered for sale and sold in commerce and is now
`
`offering for sale and selling in commerce coffee, tea, coffee complements, and related goods
`
`under the marks COMMUNITY, COMMUNITY COFFEE, and COMMUNITY - CASH FOR
`
`SCHOOLS.
`
`2.
`
`For over 100 years Community Coffee has been advertising, promoting, and
`
`selling coffee under the COMMUNITY trademark.
`
`

`

`3.
`
`Community Coffee also has for years, and well before August 29, 2021, offered,
`
`advertised, promoted, and rendered in commerce and is now offering, advertising, promoting,
`
`and rendering in commerce related coffee services under the marks COMMUNITY and
`
`COMMUNITY COFFEE.
`
`4.
`
`Community Coffee is promoting and has for many years promoted its goods and
`
`services by means of a customer loyalty program featuring charitable donations under the mark
`
`COMMUNITY CASH FOR SCHOOLS.
`
`5.
`
`Community Coffee has been operating its customer loyalty program under the
`
`mark COMMUNITY CASH FOR SCHOOLS since at least as early as 1991.
`
`6.
`
`Community Coffee has been rendering charitable fund raising services under its
`
`marks COMMUNITY COFFEE, COMMUNITY, COMMUNITY CASH FOR SCHOOLS, and
`
`COMMUNITY COFFEE CASH FOR SCHOOLS for many years, and well before August 29,
`
`2021.
`
`7.
`
`Community Coffee is the owner of the marks COMMUNITY COFFEE,
`
`COMMUNITY, COMMUNITY - CASH FOR SCHOOLS, COMMUNITY CASH FOR
`
`SCHOOLS, and COMMUNITY COFFEE CASH FOR SCHOOLS.
`
`
`
`8.
`
`Community Coffee is the owner of U.S. Trademark Registration No. 227,922 for
`
`the mark COMMUNITY for "coffee."
`
`9.
`
`A true and correct copy of U.S. Trademark Registration No. 227,922 for the
`
`COMMUNITY trademark, issued May 17, 1927, together with a print-out from the TESS and
`
`TSDR databases showing the title and status of the COMMUNITY trademark registration, are
`
`attached hereto as Exhibit 1.
`
`- 2 -
`
`Opposition No.
`Against Serial No. 97/000,607
`3C COFFEE COMMUNITY, CULTURE, AND COMFORT
`
`

`

`10.
`
`Community Coffee is the owner of U.S. Trademark Registration No. 1,322,426
`
`for the mark COMMUNITY for "decaffeinated coffee."
`
`11.
`
`A true and correct copy of U.S. Trademark Registration No. 1,322,426 for the
`
`COMMUNITY trademark, issued February 26, 1985, together with a print-out from the TESS
`
`and TSDR databases showing the title and status of the COMMUNITY trademark registration,
`
`are attached hereto as Exhibit 2.
`
`12.
`
`Community Coffee is the owner of U.S. Trademark Registration No. 1,084,137
`
`for the mark COMMUNITY for "non-dairy creamer" and "coffee and chicory, tea, instant coffee,
`
`instant decaffeinated coffee, and instant tea."
`
`13.
`
`A true and correct copy of U.S. Trademark Registration No. 1,084,137 for the
`
`COMMUNITY trademark, issued January 31, 1978, together with a print-out from the TESS and
`
`TSDR databases showing the title and status of the COMMUNITY trademark registration, are
`
`attached hereto as Exhibit 3.
`
`14.
`
`Community Coffee is the owner of U.S. Trademark Registration No. 1,493,389
`
`for the mark COMMUNITY for "tea mix which contains instant tea, natural lemon flavor, and a
`
`sweetener."
`
`15.
`
`A true and correct copy of U.S. Trademark Registration No. 1,493,389 for the
`
`COMMUNITY trademark, issued June 21, 1988, together with a print-out from the TESS and
`
`TSDR databases showing the title and status of the COMMUNITY trademark registration, are
`
`attached hereto as Exhibit 4.
`
`16.
`
`Community Coffee is the owner of U.S. Trademark Registration No. 1,347,706
`
`for the mark COMMUNITY for "paper coffee filters."
`
`- 3 -
`
`Opposition No.
`Against Serial No. 97/000,607
`3C COFFEE COMMUNITY, CULTURE, AND COMFORT
`
`

`

`17.
`
`A true and correct copy of U.S. Trademark Registration No. 1,347,706 for the
`
`COMMUNITY trademark, issued July 9, 1985, together with a print-out from the TESS and
`
`TSDR databases showing the title and status of the COMMUNITY trademark registration, are
`
`attached hereto as Exhibit 5.
`
`18.
`
`Community Coffee is the owner of U.S. Trademark Registration No. 1,494,436
`
`for the mark COMMUNITY for "office coffee kits consisting of coffee, sugar, non-dairy creamer
`
`and coffee filters."
`
`19.
`
`A true and correct copy of U.S. Trademark Registration No. 1,494,436 for the
`
`COMMUNITY trademark, issued June 28, 1988, together with a print-out from the TESS and
`
`TSDR databases showing the title and status of the COMMUNITY trademark registration, are
`
`attached hereto as Exhibit 6.
`
`20.
`
`Community Coffee is the owner of U.S. Service Mark Registration No. 1,493,719
`
`for the mark COMMUNITY for "office coffee service which includes rental of coffeemakers and
`
`sales of cups, heater plates, coffee, sweeteners, stir sticks, non-dairy creamer and coffee filters."
`
`21.
`
`A true and correct copy of U.S. Trademark Registration No. 1,493,719 for the
`
`COMMUNITY trademark, issued June 21, 1988, together with a print-out from the TESS and
`
`TSDR databases showing the title and status of the COMMUNITY trademark registration, are
`
`attached hereto as Exhibit 7.
`
`22.
`
`Community Coffee is the owner of U.S. Trademark Registration No. 5,103,073
`
`for the mark COMMUNITY for "beverage ware; cups and mugs; paper cups; vacuum bottles."
`
`23.
`
`A true and correct copy of U.S. Trademark Registration No. 5,103,073 for the
`
`COMMUNITY trademark, issued December 20, 2016, together with a print-out from the TESS
`
`- 4 -
`
`Opposition No.
`Against Serial No. 97/000,607
`3C COFFEE COMMUNITY, CULTURE, AND COMFORT
`
`

`

`and TSDR databases showing the title and status of the COMMUNITY trademark registration,
`
`are attached hereto as Exhibit 8.
`
`24.
`
`Community Coffee is the owner of U.S. Trademark Registration No. 1,872,655
`
`for the mark COMMUNITY - CASH FOR SCHOOLS for "non-dairy coffee creamers", and
`
`"coffee, tea and sugar."
`
`25.
`
`A true and correct copy of U.S. Trademark Registration No. 1,872,655 for the
`
`COMMUNITY - CASH FOR SCHOOLS trademark, issued January 10, 1995, together with a
`
`print-out from the TESS and TSDR databases showing the title and status of the COMMUNITY
`
`- CASH FOR SCHOOL trademark registration, are attached hereto as Exhibit 9.
`
`26.
`
`Community Coffee is the owner of U.S. Service Mark Registration No. 3,641,547
`
`for the mark COMMUNITY CASH FOR SCHOOLS for "charitable fund raising services."
`
`27.
`
`A true and correct copy of U.S. Service Mark Registration No. 3,641,547 for the
`
`COMMUNITY CASH FOR SCHOOLS service mark, issued June 23, 2009, together with a
`
`print-out from the TESS and TSDR databases showing the title and status of the COMMUNITY
`
`CASH FOR SCHOOLS service mark registration, are attached hereto as Exhibit 10.
`
`28.
`
`Community Coffee is the owner of U.S. Service Mark Registration No. 5,034,368
`
`for the mark COMMUNITY COFFEE CASH FOR SCHOOLS for "charitable fund raising
`
`services."
`
`29.
`
`A true and correct copy of U.S. Service Mark Registration No. 5,034,368 for the
`
`COMMUNITY COFFEE CASH FOR SCHOOLS service mark, issued September 6, 2016,
`
`together with a print-out from the TESS and TSDR databases showing the title and status of the
`
`- 5 -
`
`Opposition No.
`Against Serial No. 97/000,607
`3C COFFEE COMMUNITY, CULTURE, AND COMFORT
`
`

`

`COMMUNITY COFFEE CASH FOR SCHOOLS service mark registration, are attached hereto
`
`as Exhibit 11.
`
`30.
`
`Community Coffee is the owner of U.S. Service Mark Registration No. 3,555,674
`
`for the mark COMMUNITY for "coffee shops."
`
`31.
`
`A true and correct copy of U.S. Service Mark Registration No. 3,555,674 for the
`
`COMMUNITY service mark, issued January 6, 2009, together with a print-out from the TESS
`
`and TSDR databases showing the title and status of the COMMUNITY service mark
`
`registration, are attached hereto as Exhibit 12.
`
`32.
`
`Community Coffee is the owner of U.S. Trademark Registration No. 5,857,579
`
`for the mark COMMUNITY COFFEE for "coffee; tea; sugar; office coffee kits consisting of
`
`coffee, sugar, non-diary creamer, and coffee filters."
`
`33.
`
`A true and correct copy of U.S. Trademark Registration No. 5,857,579 for the
`
`COMMUNITY COFFEE trademark mark, issued September 10, 2019, together with a print-out
`
`from the TESS and TSDR databases showing the title and status of the COMMUNITY
`
`trademark registration, are attached hereto as Exhibit 13.
`
`34.
`
`Community Coffee has applied in Application Serial No. 97/385,239 to register
`
`the service mark COMMUNITY COFFEE for "Online retail store services featuring coffee, tea,
`
`sugar, non-dairy creamer, coffee filters, beverage ware, mugs, and travel mugs" in Class 35.
`
`35.
`
`Applicant, Jungyeol Kim, has applied in Application Serial No. 97/000,607 to
`
`register the mark 3C COFFEE COMMUNITY, CULTURE, AND COMFORT for "Coffee bars;
`
`coffee shops" in Class 43.
`
`- 6 -
`
`Opposition No.
`Against Serial No. 97/000,607
`3C COFFEE COMMUNITY, CULTURE, AND COMFORT
`
`

`

`36.
`
`Applicant has claimed no use of the applied for service mark, 3C
`
`COFFEE COMMUNITY, CULTURE, AND COMFORT.
`
`37.
`
`On information and belief, Applicant has not used the 3C
`
`COFFEE COMMUNITY, CULTURE, AND COMFORT mark.
`
`38.
`
`On information and belief, Applicant has not used the 3C
`
`COFFEE COMMUNITY, CULTURE, AND COMFORT mark with any of the services covered
`
`by the application.
`
`39.
`
`On information and belief, Applicant has not used in commerce the 3C
`
`COFFEE COMMUNITY, CULTURE, AND COMFORT mark.
`
`40.
`
`On information and belief, Applicant has not used in commerce the 3C
`
`COFFEE COMMUNITY, CULTURE, AND COMFORT mark with any of the services covered
`
`by the application.
`
`41.
`
`On information and belief, Applicant has not used the 3C
`
`COFFEE COMMUNITY, CULTURE, AND COMFORT mark prior to August 29, 2021, the
`
`filing date of the intent-to-use application.
`
`
`
`42.
`
`Applicant's mark, 3C COFFEE COMMUNITY, CULTURE, AND COMFORT, is
`
`confusingly similar to Community Coffee's trade name and marks COMMUNITY COFFEE,
`
`COMMUNITY, COMMUNITY - CASH FOR SCHOOLS, COMMUNITY CASH FOR
`
`SCHOOLS, and COMMUNITY COFFEE CASH FOR SCHOOLS.
`
`43.
`
`Applicant's mark, 3C COFFEE COMMUNITY, CULTURE, AND COMFORT,
`
`so resembles Community Coffee's trade name Community Coffee and marks COMMUNITY
`
`COFFEE, COMMUNITY, COMMUNITY - CASH FOR SCHOOLS, COMMUNITY CASH
`
`- 7 -
`
`Opposition No.
`Against Serial No. 97/000,607
`3C COFFEE COMMUNITY, CULTURE, AND COMFORT
`
`

`

`FOR SCHOOLS, and COMMUNITY COFFEE CASH FOR SCHOOLS as to be likely, when
`
`used on or in conjunction with the services identified in Serial No. 97/000,607, to cause
`
`confusion or to cause mistake or to cause deception.
`
`44.
`
`Applicant's services are related to Community Coffee's goods and services, would
`
`be marketed in the same channels of trade and to the same consumers such that consumers will
`
`likely be confused, be mistaken or be deceived into believing that Applicant's services offered
`
`under the 3C COFFEE COMMUNITY, CULTURE, AND COMFORT mark originate from, are
`
`authorized by, or are in some way connected with Community Coffee.
`
`45.
`
`Community Coffee will be damaged by registration of the 3C
`
`COFFEE COMMUNITY, CULTURE, AND COMFORT mark in Application Serial
`
`No. 97/000,607.
`
`- 8 -
`
`Opposition No.
`Against Serial No. 97/000,607
`3C COFFEE COMMUNITY, CULTURE, AND COMFORT
`
`

`

`WHEREFORE, Opposer, Community Coffee Company, L.L.C., prays that this
`
`opposition be sustained and registration be refused for the mark shown in Serial No. 97/000,607.
`
`Date: November 15, 2022
`
`
`Respectfully submitted,
`
`COMMUNITY COFFEE COMPANY, L.L.C.
`
`By /Kathryn E. Garipay/
`Arne M. Olson
`Kathryn E. Garipay
`OLSON & CEPURITIS, LTD.
`20 North Wacker Drive
`36th Floor
`Chicago, Illinois 60606
`(312) 580-1180
`
`Attorneys for Opposer
`Community Coffee Company, L.L.C.
`
`- 9 -
`
`Opposition No.
`Against Serial No. 97/000,607
`3C COFFEE COMMUNITY, CULTURE, AND COMFORT
`
`

`

`EXHIBIT 1
`EXHIBIT 1
`
`
`
`

`

`Int. CL: 30
`
`Prior U.S. Cl.: 46
`United States Patent and Trademark Office
`Amended
`
`Reg. No. 227,922
`Registered May 17, 1927
`QG Date Oct. 24, 2006
`
`TRADEMARK
`PRINCIPAL REGISTER
`
`COMMUNITY
`
`COMMUNITY COFFEE COMPANY,INC.
`(LOUISIANA CORPORATION)
`4000 SOUTH SHERWOOD FOREST BLVD.
`1.1919:
`BATON ROUGE, LA 70816
`ee RoeS tp roeiD" IS DIS- St USE 4-1-1919; IN COMMERCE
`CLAIMED APART FROM THE OTHER
`COTORESCWINGL MARK AS SHOWN
`SER. NO. 71-211,235, FILED 3-18-1925.
`
`FOR: COFFEE, IN CLASS 46 (INT. CL.
`30).
`
`In testimony whereof I have hereunto set my hand
`and caused the seal of The Patent and Trademark
`Office to be affixed on Oct. 24, 2006.
`
`DIRECTOR OF THE U.S. PATENT AND TRADEMARK OFFICE
`
`

`

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`to TESS)
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` ( Use the "Back" button of the Internet Browser to return
`
`Word Mark
`
`Goods and
`Services
`
`Mark Drawing
`Code
`
`Serial Number
`
`Filing Date
`
`Current Basis
`
`Original Filing
`Basis
`
`Change In
`Registration
`
`COMMUNITY
`
`IC 030. US 046. G & S: COFFEE. FIRST USE: 19190401. FIRST USE IN COMMERCE: 19190401
`
`(1) TYPED DRAWING
`
`71211235
`March 18, 1925
`1A
`
`1A
`
`CHANGE IN REGISTRATION HAS OCCURRED
`
`0227922
`
`Registration
`Number
`Registration Date May 17, 1927
`(REGISTRANT) SAURAGE, HENRY NORMAN DBA BATON ROUGE COFFEE MILLS INDIVIDUAL
`Owner
`UNITED STATES 333 LEON ST. BATON ROUGE LOUISIANA
`
`(LAST LISTED OWNER) COMMUNITY COFFEE COMPANY, L.L.C. LIMITED LIABILITY COMPANY
`LOUISIANA 3332 PARTRIDGE LANE BLDG. A BATON ROUGE LOUISIANA 70809
`
`Assignment
`Recorded
`
`Attorney of
`Record
`
`Disclaimer
`
`Type of Mark
`
`Register
`
`Affidavit Text
`
`Renewal
`
`ASSIGNMENT RECORDED
`
`KATHRYN E. GARIPAY
`
`THE WORD "BRAND" IS DISCLAIMED APART FROM THE OTHER FEATURES OF THE MARK AS
`SHOWN IN THE DRAWING.
`TRADEMARK
`PRINCIPAL
`SECT 12C. SECT 15. SECTION 8(10-YR) 20161205.
`5TH RENEWAL 20161205
`
`1 of 2
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`

`Generated on: This page was generated by TSDR on 2022-11-15 10:09:33 EST
`Mark: COMMUNITY
`
`US Serial Number:
`
`71211235
`
`US Registration
`Number:
`
`227922
`
`Application Filing Mar. 18, 1925
`Date:
`
`Registration Date: May 17, 1927
`
`Register:
`
`Principal
`Trademark
`
`Mark Type:
`TM5 CommonStatus
`
`Descriptor:
`
`@®
`aw
`
`LIVE/REGISTRATION/Issued and Active
`
`The trademark application has been registered with the Office.
`
`Status:
`
`The registration has been renewed.
`
`Status Date:
`
`Dec. 05, 2016
`
`Mark Information
`
`Mark Literal
`Elements:
`
`COMMUNITY
`
`Standard Character
`Claim:
`
`No
`
`Mark Drawing
`Type:
`Disclaimer:
`
`1 - TYPESET WORD(S) /LETTER(S) /NUMBER(S)
`
`THE WORD "BRAND" IS DISCLAIMED APART FROM THE OTHER FEATURES OF THE MARK AS SHOWNIN THE DRAWING.
`
`Related Properties Information
`
`Publish Previously
`Registered Mark:
`
`Yes
`
`Previously
`Registered Mark
`Publication Date:
`
`Sep. 07, 1948
`
`Goods and Services
`
`Note:
`indicate that the registrant/owner has amended the goods/services:
`Thefollowing symbols
`e Brackets [..] indicate deleted goods/services;
`e Double parenthesis ((..)) identify any goods/services not claimed in a Section 15 affidavit of incontestability; and
`e Asterisks *..* identify additional (new) wording in the goods/services.
`
`For: COFFEE
`
`International 030
`Class(es):
`Class Status: ACTIVE
`
`Basis: 1(a)
`
`U.S Class(es): 046 - Primary Class
`
`First Use: Apr. 01, 1919
`Use in Commerce: Apr. 01, 1919
`
`Basis Information (Case Level)
`
`Filed Use: Yes
`Currently Use: Yes
`
`

`

`Filed ITU: No
`
`Filed 44D: No
`
`Filed 44E: No
`
`Filed 66A: No
`
`Filed No Basis: No
`
`Currently ITU: No
`
`Currently 44E: No
`
`Currently 66A: No
`
`Currently No Basis: No
`
`Current Owner(s) Information
`
`Owner Name: COMMUNITY COFFEE COMPANY, L.L.C.
`
`Owner Address: 3332 PARTRIDGE LANE
`BLDG. A
`BATON ROUGE, LOUISIANA UNITED STATES 70809
`
`Legal Entity Type: LIMITED LIABILITY COMPANY
`
`State or Country
`Where Organized:
`
`LOUISIANA
`
`Attorney/Correspondence Information
`
`Attorney Name: KATHRYN E. GARIPAY
`
`Attorney Primary
`Email Address:
`
`TMDocket@olsonip.com
`
`Correspondent
`Name/Address:
`
`KATHRYN E. GARIPAY
`OLSON & CEPURITIS, LTD.
`20 N WACKER DR
`36TH FL
`CHICAGO, ILLINOIS UNITED STATES 60606
`
`Attorney of Record
`
`Attorney Email
`Authorized:
`
`Yes
`
`Correspondent
`
`Phone:
`
`(312) 580-1180
`
`Correspondent e-
`mail:
`
`TMDocket@olsonip.com
`
`Fax:
`
`(312) 580-1189
`
`Correspondent e-
`mail Authorized:
`
`Yes
`
`Domestic Representative - Not Found
`Prosecution History
`
`Date
`
`Description
`
`Aug. 02, 2017
`Dec. 05, 2016
`Dec. 05, 2016
`Dec. 05, 2016
`Dec. 05, 2016
`Sep. 26, 2016
`May 04, 2012
`Jan. 12, 2009
`Jun. 09, 2007
`Jun. 09, 2007
`Apr. 30, 2007
`Apr. 30, 2007
`Sep. 18, 2006
`Sep. 13, 2006
`Aug. 29, 2006
`Aug. 29, 2006
`Apr. 25, 2006
`Mar. 17, 2006
`Jan. 30, 2006
`Jan. 30, 2006
`Jan. 27, 2003
`May 17, 1987
`
`AUTOMATIC UPDATE OF ASSIGNMENT OF OWNERSHIP
`NOTICE OF ACCEPTANCE OF SEC. 8 & 9 - E-MAILED
`REGISTERED AND RENEWED (FIFTH RENEWAL - 10 YRS)
`REGISTERED - SEC. 8 (10-YR) ACCEPTED/SEC. 9 GRANTED
`CASE ASSIGNED TO POST REGISTRATION PARALEGAL
`TEAS SECTION 8 & 9 RECEIVED
`NOTICE OF SUIT
`CASE FILE IN TICRS
`REGISTERED AND RENEWED (FOURTH RENEWAL - 10 YRS)
`REGISTERED - SEC. 8 (10-YR) ACCEPTED/SEC. 9 GRANTED
`REGISTERED - COMBINED SECTION 8 (10-YR) & SEC. 9 FILED
`PAPER RECEIVED
`AMENDMENT UNDER SECTION 7 – PROCESSED
`ASSIGNED TO PARALEGAL
`SEC 7 REQUEST FILED
`PAPER RECEIVED
`AMENDMENT UNDER SECTION 7 – PROCESSED
`ASSIGNED TO PARALEGAL
`SEC 7 REQUEST FILED
`PAPER RECEIVED
`PAPER RECEIVED
`REGISTERED AND RENEWED (THIRD RENEWAL - 20 YRS)
`
`Proceeding
`Number
`
`67110
`67110
`67110
`
`67723
`
`67723
`
`64591
`
`

`

`Apr. 20, 1987
`May 17, 1967
`
`REGISTERED - SEC. 9 FILED/CHECK RECORD FOR SEC. 8
`REGISTERED AND RENEWED (SECOND RENEWAL - 20 YRS)
`TM Staff and Location Information
`
`Current Location: GENERIC WEB UPDATE
`
`Date in Location: Dec. 05, 2016
`
`Assignment Abstract Of Title Information
`
`TM Staff Information - None
`
`File Location
`
`Summary
`
`Total Assignments: 3
`
`Assignment 1 of 3
`
`Registrant: SAURAGE, HENRY NORMAN
`
` 
`
`Conveyance: ASSIGNS ALL INTEREST, TOGETHER WITH THE GOOD WILL OF THE BUSINESS SYMBOLIZED BY SAID MARK.
`
`Reel/Frame: 0025/0357
`
`Date Recorded: Jan. 15, 1957
`
`Supporting
`Documents:
`
`No Supporting Documents Available
`
`Name: COMMUNITY COFFEE MILLS, BY H. N.
`SAURAGE, A PARTNER.
`
`Legal Entity Type: UNKNOWN
`
`Name: COMMUNITY COFFEE COMPANY, INC.
`
`Legal Entity Type: UNKNOWN
`
`Address: BATON ROUGE, LOUISIANA
`
`Correspondent
`Name:
`
`Correspondent
`Address:
`
`No Correspondent Address Found
`
`Pages: 0
`
`Assignor
`
`Execution Date: Jan. 03, 1957
`
`State or Country
`Where Organized:
`
`Assignee
`
`No Place Where Organized Found
`
`State or Country
`Where Organized:
`
`No Place Where Organized Found
`
`Correspondent
`
`Domestic Representative - Not Found
`
`Assignment 2 of 3
`
`Pages: 4
`
`Conveyance: ASSIGNS THE ENTIRE INTEREST
`
`Reel/Frame: 1619/0185
`
`Date Recorded: Jul. 30, 1997
`
`Supporting
`Documents:
`
`No Supporting Documents Available
`
`Name: COMMUNITY COFFEE COMPANY, INC.
`
`Execution Date: Mar. 05, 1997
`
`Assignor
`
`Legal Entity Type: CORPORATION
`
`Name: COMMUNITY COFFEE COMPANY OF TEXAS, INC.
`
`Legal Entity Type: CORPORATION
`
`State or Country
`Where Organized:
`
`LOUISIANA
`
`Assignee
`
`State or Country
`Where Organized:
`
`TEXAS
`
`Address: 489 WEST 38TH STREET
`HOUSTON, TEXAS 77018
`
`Correspondent
`Name:
`
`DRY & STACY, L.L.P.
`
`Correspondent N. ELTON DRY
`
`Correspondent
`
`

`

`Address: 440 LOUISIANA, SUITE 200
`HOUSTON, TEXAS 77002
`
`Conveyance: MERGER EFFECTIVE 06/30/2017
`
`Reel/Frame: 6116/0237
`
`Date Recorded: Jul. 21, 2017
`
`Supporting
`Documents:
`
`assignment-tm-6116-0237.pdf
`
`Domestic Representative - Not Found
`
`Assignment 3 of 3
`
`Pages: 3
`
`Name: COMMUNITY COFFEE COMPANY OF TEXAS,
`INC.
`
`Legal Entity Type: CORPORATION
`
`Name: COMMUNITY COFFEE COMPANY, L.L.C.
`
`Legal Entity Type: LIMITED LIABILITY COMPANY
`
`Address: 3332 PARTRIDGE LANE
`BLDG. A
`BATON ROUGE, LOUISIANA 70809
`
`Correspondent
`Name:
`
`Correspondent
`Address:
`
`OLSON & CEPURITIS, LTD.
`
`20 NORTH WACKER DRIVE
`36TH FLOOR
`CHICAGO, IL 60606
`
`Assignor
`
`Execution Date: Jun. 15, 2017
`
`State or Country
`Where Organized:
`
`TEXAS
`
`Assignee
`
`State or Country
`Where Organized:
`
`LOUISIANA
`
`Correspondent
`
`Domestic Representative - Not Found
`
`

`

`EXHIBIT 2
`EXHIBIT 2
`
`
`
`

`

`Int. Cl: 30
`
`Prior U.S. Cl: 46
`
`United States Patent and Trademark Office
`
`Reg. No. 1,322,426
`Registered Feb, 26, 1985
`
`TRADEMARK
`Principal Register
`
`COMMUNITY
`
`Community Coffee Company,
`corporation)
`P.O. Box 791
`Baton Rouge, La. 70821
`
`Inc.
`
`(Louisiana
`
`For: DECAFFEINATED COFFEE,
`30 (U.S. Cl. 46).
`First use Oct. 20, 1982; in commerce Oct. 21, 1982.
`Owner of U.S. Reg. Nos. 227,922, 1,084,137 and
`1,187,942.
`
`in CLASS
`
`Ser. No. 472,705, filed Mar. 28, 1984.
`
`AMOS T. MATTHEWS,JR., Examining Attorney
`
`

`

`Trademark Electronic Search System (TESS)
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`Trademarks > Trademark Electronic Search System (TESS)
`
`TESS was last updated on Tue Nov 15 03:17:22 EST 2022
`
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`
`Record 1 out of 1
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`
`to TESS)
`
`Word Mark
`
`Goods and
`Services
`
`Mark Drawing
`Code
`
`Serial Number
`
`Filing Date
`
`Current Basis
`
`Original Filing
`Basis
`
`Published for
`Opposition
`
`COMMUNITY
`IC 030. US 046. G & S: Decaffeinated Coffee. FIRST USE: 19821020. FIRST USE IN COMMERCE:
`19821021
`
`(1) TYPED DRAWING
`
`73472705
`March 28, 1984
`1A
`
`1A
`
`December 18, 1984
`
`1322426
`
`Registration
`Number
`Registration Date February 26, 1985
`(REGISTRANT) Community Coffee Company, Inc. CORPORATION LOUISIANA P.O. Box 791 Baton
`Owner
`Rouge LOUISIANA 70821
`
`(LAST LISTED OWNER) COMMUNITY COFFEE COMPANY, L.L.C. LIMITED LIABILITY COMPANY
`LOUISIANA 3332 PARTRIDGE LANE BLDG. A BATON ROUGE LOUISIANA 70809
`
`ASSIGNMENT RECORDED
`
`Assignment
`Recorded
`Attorney of Record Kathryn E. Garipay
`Prior Registrations 0227922;1084137;1187942
`TRADEMARK
`Type of Mark
`PRINCIPAL
`SECT 15. SECT 8 (6-YR). SECTION 8(10-YR) 20150210.
`2ND RENEWAL 20150210
`
`Register
`
`Affidavit Text
`
`Renewal
`
`Live/Dead
`Indicator
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`

`Generated on: This page was generated by TSDR on 2022-11-15 10:25:33 EST
`Mark: COMMUNITY
`
`US Serial Number: 73472705
`
`US Registration 1322426
`Number:
`
`Register: Principal
`
`Mark Type: Trademark
`TM5 CommonStatus
`
`Descriptor:
`
`@®
`
`Status: The registration has been renewed.
`
`Status Date: Feb. 10, 2015
`
`Publication Date:Dec. 18, 1984
`
`Mark Literal COMMUNITY
`Elements:
`
`Standard Character No
`Claim:
`
`Application Filing Mar. 28, 1984
`Date:
`
`Registration Date: Feb. 26, 1985
`
`LIVE/REGISTRATION/Issued and Active
`
`The trademark application has been registered with the Office.
`
`Mark Information
`
`Mark Drawing 1 - TYPESET WORD(S) /LETTER(S) /NUMBER(S)
`Type:
`
`Related Properties Information
`
`Claimed Ownership 0227922, 1084137, 1187942
`of US
`Registrations:
`
`Goods and Services
`
`Note:
`The following symbols indicate that the registrant/owner has amended the goods/services:
`e Brackets[..] indicate deleted goods/services;
`e Double parenthesis ((..)) identify any goods/services not claimed in a Section 15 affidavit of incontestability; and
`e Asterisks *..* identify additional (new) wording in the goods/services.
`
`For: Decaffeinated Coffee
`
`International 030 - Primary Class
`Class(es):
`Class Status: ACTIVE
`
`Basis: 1(a)
`
`First Use: Oct. 20, 1982
`
`U.S Class(es): 046
`
`Use in Commerce: Oct. 21, 1982
`
`Basis Information (Case Level)
`
`Filed Use: Yes
`
`Filed ITU: No
`
`Currently Use: Yes
`
`Currently ITU: No
`
`

`

`Filed 44D: No
`
`Filed 44E: No
`
`Filed 66A: No
`
`Filed No Basis: No
`
`Currently 44E: No
`
`Currently 66A: No
`
`Currently No Basis: No
`
`Current Owner(s) Information
`
`Owner Name: COMMUNITY COFFEE COMPANY, L.L.C.
`
`Owner Address: 3332 PARTRIDGE LANE
`BLDG. A
`BATON ROUGE, LOUISIANA UNITED STATES 70809
`
`Legal Entity Type: LIMITED LIABILITY COMPANY
`
`State or Country
`Where Organized:
`
`LOUISIANA
`
`Attorney/Correspondence Information
`
`Attorney Name: Kathryn E. Garipay
`
`Attorney Primary
`Email Address:
`
`TMDocket@olsonip.com
`
`Correspondent
`Name/Address:
`
`Kathryn E. Garipay
`OLSON & CEPURITIS, LTD.
`20 North Wacker Drive
`36th Floor
`CHICAGO, ILLINOIS UNITED STATES 60606
`
`Attorney of Record
`
`Attorney Email
`Authorized:
`
`Yes
`
`Correspondent
`
`Phone:
`
`(312) 580-1180
`
`Fax:
`
`(312) 580-1189
`
`Correspondent e-
`mail:
`
`TMDocket@olsonip.com docket@olsonip.com kga
`ripay@olsonip.com aolson@o