`ESTTA1269249
`03/01/2023
`
`ESTTA Tracking number:
`
`Filing date:
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Notice of Opposition
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`Notice is hereby given that the following parties oppose registration of the indicated application.
`
`Opposers information
`
`Name
`
`Ideal Living, LLC
`
`Granted to date
`of previous ex-
`tension
`
`Address
`
`Name
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`Entity
`
`Address
`
`Attorney informa-
`tion
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`03/01/2023
`
`14724 VENTURE BLVD.
`SUITE 200
`SHERMAN OAKS, CA 91403
`UNITED STATES
`
`Air Doctor, LLC
`
`Limited Liability Company
`
`Citizenship
`
`Delaware
`
`14724 VENTURE BLVD.
`SUITE 200
`SHERMAN OAKS, CA 91403
`UNITED STATES
`
`JEREMY D. SPIER
`EVERSHEDS SUTHERLAND (US) LLP
`999 PEACHTREE SUITE NE
`SUITE 2300
`ATLANTA, GA 30309
`UNITED STATES
`Primary email: jeremyspier@eversheds-sutherland.com
`Secondary email(s): patentdocket@eversheds-sutherland.com, jennifersand-
`lin@eversheds-sutherland.com, kheonhendricks@eversheds-sutherland.com,
`alyssamsmith@eversheds-sutherland.com
`4048538926
`
`Docket no.
`
`31686-1255
`
`Applicant information
`
`Application no.
`
`90522454
`
`03/01/2023
`
`Opposition filing
`date
`
`Applicant
`
`Publication date
`
`11/01/2022
`
`Opposition period
`ends
`
`03/01/2023
`
`Kiyou Jochugiku Co., Ltd.
`1135, KAMI, SHIMOTSU-CHO
`KAINAN-SHI, WAKAYAMA, 649-0164
`JAPAN
`
`Goods/services affected by opposition
`
`Class 010. First Use: None First Use In Commerce: None
`All goods and services in the class are opposed, namely: Masks for use by medical personnel; Sanit-
`
`
`
`ary masks for medical purposes; Surgical masks
`
`Grounds for opposition
`
`Priority and likelihood of confusion
`
`False suggestion of a connection with persons,
`living or dead, institutions, beliefs, or national
`symbols
`
`Trademark Act Section 2(d)
`
`Trademark Act Section 2(a)
`
`Mark cited by opposer as basis for opposition
`
`U.S. registration
`no.
`
`5177385
`
`Register
`
`Principal
`
`Registration date
`
`04/04/2017
`
`Application date
`
`10/30/2015
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`AIRDOCTOR
`
`NONE
`
`Class 011. First use: First Use: Dec 12, 2015 First Use In Commerce: Dec 12,
`2015
`Household appliances, namely, portable air cleaners and filters for household
`and consumer use
`
`Attachments
`
`Notice of Opposition - AIR DR.pdf(724604 bytes )
`
`Signature
`
`/Jennifer R. Sandlin/
`
`Name
`
`Date
`
`Jennifer R. Sandlin
`
`03/01/2023
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
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`Ideal Living, LLC
`Opposer
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`&
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`Air Doctor, LLC
`Opposer
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`v.
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`Kiyou Jochugiku Co., Ltd.
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`Respondent
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`Serial No. 90/522,454
`
`Opposition No.
`
`
`
`
`Notice of Opposition
`
`
`
`Ideal Living, LLC (“Ideal Living”), organized and existing under the laws of the state of
`
`Delaware with a principal place of business at 14724 Venture Boulevard, Suite 200, Sherman
`
`Oaks, California, and its wholly owned subsidiary Air Doctor, LLC, organized and existing under
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`the laws of the state of Delaware with a principal place of business at 14724 Venture Boulevard,
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`Suite 200, Sherman Oaks, California, (collectively, “Opposer”) owner of the registered trademark
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`AIRDOCTOR® (Reg. No. 5,177,385) which has been in use in commerce in connection with air
`
`cleaners and filters since at least as early as December 12, 2015, and the common law trademark
`
`AIRDOCTOR™, which has been in use in commerce in connection with facemasks since at least
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`as early as April 15, 2020, believes that it will be damaged by the issuance of a registration for the
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`alleged mark shown in Application Serial No. 90/522,454 in Class 010 (the “Application”), owned
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`by Kiyou Jochugiku Co., Ltd. (“Applicant”) and filed on February 10, 2021. Opposer hereby
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`1
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`
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`opposes the same pursuant to Section 13(a) of the Lanham Trademark Act of 1946 (“Lanham
`
`Act”), 15 U.S.C. § 1063(a).
`
`
`
`As grounds for opposition, Opposer alleges as follows:
`
`Opposer Background
`
`1.
`
`Opposer manufactures, sells, and offers for sale a wide variety of consumer
`
`household and personal products, including portable air cleaners, air filters, and facemasks.
`
`Opposer’s products are highly sought after in the United States and around the globe.
`
`2.
`
`Opposer, through its wholly owned subsidiary, Air Doctor, LLC, owns United
`
`States Trademark Registration No. 5,177,385 (the “’385 Registration”) for the mark
`
`AIRDOCTOR®, filed on October 30, 2015, covering “[h]ousehold appliances, namely, portable
`
`air cleaners and filters for household and consumer use” in International Class 011. The
`
`AIRDOCTOR® mark has been in use in commerce since at least as early as December 12, 2015.
`
`Opposer acquired all right, title, and interest in and to the ’385 Registration, including all
`
`associated goodwill, on December 31, 2018, and duly recorded the assignment of this interest with
`
`the United States Patent and Trademark Office on August 14, 2020. As such, Opposer is entitled
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`to enforce any and all rights in the ’385 Registration, including claims of infringement and
`
`opposition of applications likely to result in a likelihood of confusion with the AIRDOCTOR®
`
`mark.
`
`3.
`
`The United States Patent and Trademark Office has accepted and acknowledged
`
`the Section 15 Declaration of Incontestability for the ’385 Registration, and thus the
`
`AIRDOCTOR® mark is immune to challenges to its validity or ownership, among other grounds.
`
`4.
`
`Since at least October 30, 2017, Opposer (and its predecessor-in-interest) has
`
`operated the website www.airdoctorpro.com (the “AirDoctor Website”), which uses the
`
`2
`
`
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`AIRDOCTOR™ mark in association with Opposer’s goods. A screenshot from www.archive.org
`
`of the AirDoctor Website as of October 30, 2017 is provided:
`
`
`
`5.
`
`On January 13, 2017, Opposer registered a Facebook account under the name
`
`AIRDOCTOR™. Opposer uses its Facebook profile to advertise its products and post content
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`that features the AIRDOCTOR™ mark. As of March 1, 2023, Opposer’s Facebook page had
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`nearly 19,000 followers.
`
` A screenshot of Opposer’s Facebook page, accessible at
`
`www.facebook.com/airdoctorpro/, as of March 1, 2023, is provided:
`
`
`
`3
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`
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`6.
`
`In January 2019, Opposer created an Instagram page with the handle
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`“@airdoctorpro.” Opposer uses its Instagram profile to advertise its products and post content that
`
`features the AIRDOCTOR™ mark. As of March 1, 2023, Opposer’s Instagram page had over
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`80,600
`
`followers. A
`
`screenshot
`
`of Opposer’s
`
`
`page,
`
`accessible
`
`at
`
`www.instagram.com/airdoctorpro/, as of March 1, 2023, is provided:
`
`
`
`7.
`
`Opposer’s AIRDOCTOR® branded air cleaners and filters are available via direct
`
`purchase from Opposer and are sold through major retailers and affiliates across the United States,
`
`including Walmart and Lowe’s, and international distributors in at least seven other countries.
`
`Opposer also operates an AIRDOCTOR® store on Amazon to advertise and sell Opposer’s
`
`AIRDOCTOR® branded air cleaning and
`
`filtering products. A screenshot
`
`from
`
`www.amazon.com of the AIRDOCTOR® Amazon store as of March 1, 2023 is provided:
`
`4
`
`
`
`
`
`8.
`
`Opposer and its AIRDOCTOR™ mark enjoy an impeccable reputation in the
`
`consumer products and air filtering industry. Opposer has completed thousands of orders of
`
`AIRDOCTOR™ branded products. Opposer and its AIRDOCTOR® air cleaners and filters
`
`have been featured in major national news outlets, including ABC, the Chicago Tribune, CNN,
`
`and Money, and garnered thousands of 5-star reviews on online retail platforms.
`
`9.
`
`Inspired by the pressing need for personal protective equipment spurred by the
`
`global outbreak of COVID-19, and in light of Opposer’s expertise and reputation in the air filtering
`
`industry, Opposer began offering facemasks branded under the AIRDOCTOR™ mark at least as
`
`early as April 15, 2020. Opposer offers FDA approved N95 masks, disposable facemasks, and
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`surgical masks under the AIRDOCTOR™ brand. Photographs of a facemask and associated
`
`product packaging bearing the AIRDOCTOR™ mark are shown below:
`
`5
`
`
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`10.
`
`Opposer offers AIRDOCTOR™ brand facemasks through Opposer’s website and
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`through direct sales and donation inquiries. A screenshot from the AirDoctor Website showing
`
`AIRDOCTOR™ brand facemasks available for purchase as of March 1, 2023 is provided:
`
`
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`11.
`
`Over the last three years, Opposer has donated over 100,000 packages of
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`AIRDOCTOR™ brand facemasks to support healthcare facilities, community organizations, first
`
`
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`6
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`
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`responders, and essential businesses across the country. Further, Opposer has offered
`
`AIRDOCTOR™ brand facemasks with at-cost pricing to help address the COVID-19 public
`
`health crisis and to increase access to government-mandated personal protective equipment.
`
`12.
`
`Since at least as early as December 12, 2015, the AIRDOCTOR® mark has been
`
`used as a source identifier by Opposer, and its predecessor-in-interest, in association with portable
`
`air cleaners and filters.
`
`13.
`
`The AIRDOCTOR® mark has been used consistently in interstate commerce in
`
`the United States since at least as early as 2015 in connection with the promotion and sale of
`
`AIRDOCTOR® branded portable air cleaners and filters.
`
`14.
`
`Since at least as early as April 15, 2020, the AIRDOCTOR™ mark has been used
`
`as a source identifier by Opposer in association with facemasks.
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`15.
`
`The AIRDOCTOR™ mark has been used consistently in interstate commerce in
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`the United States since at least as early as 2020 in connection with the promotion and sale of
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`AIRDOCTOR™ branded facemasks.
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`16.
`
`The AIRDOCTOR™ mark is suggestive when used in connection with Opposer’s
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`air cleaners, filters, and facemasks that are branded under the AIRDOCTOR™ mark. Put another
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`way, AIRDOCTOR™ does not directly describe a characteristic or quality of these products.
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`Accordingly, AIRDOCTOR™ is an inherently distinctive mark and is presumed to have
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`secondary meaning when used with Opposer’s goods.
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`17.
`
`Opposer has invested hundreds of thousands of dollars to promote the
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`AIRDOCTOR™ mark in connection with Opposer’s portable air cleaning and filtering products,
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`including facemasks, through online, print, and social media advertising. These activities promote
`
`7
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`
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`a direct connection between Opposer’s air purifying products, including facemasks, and the
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`AIRDOCTOR™ mark.
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`18.
`
`Because of Opposer’s widespread, continuous, and substantially exclusive use of
`
`the AIRDOCTOR™ mark for air filtering products generally, and for facemasks specifically,
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`consumers associate AIRDOCTOR™ with Opposer, and Opposer has acquired substantial
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`goodwill and secondary meaning in connection with AIRDOCTOR™—in addition to the already
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`inherently distinctive nature of the mark. Thus, Opposer owns common law rights to the
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`AIRDOCTOR™ mark, and Opposer’s AIRDOCTOR™ mark is distinctive to both the
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`consuming public and in Opposer’s trade.
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`Applicant Background
`
`19.
`
`Upon information and belief, Applicant, organized and existing under the laws of
`
`Japan with an address at 1135, Kami, Shimotsu-cho, Kainan-shi, Wakayama, Japan 649-0164,
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`owns U.S. Trademark Application Serial No. 90/522,454, filed on February 10, 2021, to register
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`“Air Dr.” in International Class 010 (the “Applied-for Mark”) for the same types of goods that
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`Opposer has offered to U.S. consumers under its AIRDOCTOR™ mark since at least as early as
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`April 15, 2020.
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`20.
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`According to the Application, Applicant claims priority to Japanese Registration
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`No. 6317724, with a registration date of November 17, 2020—approximately 5 years after
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`Opposer first began use of AIRDOCTOR® in the air filtering industry and approximately 7
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`months after Opposer began to use the AIRDOCTOR™ mark specifically in connection with
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`facemasks.
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`21.
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`Opposer’s inherently distinctive AIRDOCTOR™ mark has priority over the
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`Applied-for Mark because all relevant dates predate the Applicant’s filing date or, upon
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`8
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`
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`information and belief, any other date on which the Applicant may rely for purposes of priority.
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`Opposer also has priority in AIRDOCTOR™ based on the goodwill and secondary meaning it
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`has acquired in the mark prior to Opposer’s Application date and foreign registration date claimed
`
`therein.
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`22.
`
`Because Opposer has superior rights in AIRDOCTOR™ over the Applied-for
`
`Mark, Opposer has the right to exclude Applicant from the use and registration of the Applied-for
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`Mark.
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`23.
`
`Applicant’s Applied-for Mark
`
`is
`
`confusingly
`
`similar
`
`to Opposer’s
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`AIRDOCTOR® registered mark and AIRDOCTOR™ common law mark because the marks are
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`substantially similar in terms of appearance, sound, and connotation and used in connection with
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`identical and substantially related goods, resulting in an identical commercial impression.
`
`24.
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`Applicant’s identified services are “[m]asks for use by medical personnel;
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`[s]anitary masks for medical purposes; [s]urgical masks,” which are substantially commercially
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`related to Opposer’s goods identified in the ’385 Registration of “[h]ousehold appliances, namely,
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`portable air cleaners and filters for household and consumer use” and identical to Opposer’s
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`facemasks branded under the AIRDOCTOR™ common law mark.
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`25.
`
`The identical goods coincide with an overlap in customer bases between the
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`Opposer and the Applicant. Applicant’s facemasks are clearly targeted at consumers who are
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`interested or in need of air filtering products, particularly personal protective facemasks, which are
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`subsumed by Opposer’s customer base.
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`26.
`
`Opposer’s long-standing use of AIRDOCTOR™ is associated with Opposer’s air
`
`filtering products, including specifically facemasks. Thus, the use of the substantially similar
`
`Applied-for Mark by Applicant for identical goods that are offered through identical channels is
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`9
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`
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`likely to result in consumer confusion as to the source of Opposer’s AIRDOCTOR™ brand
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`products, a mistaken assumption that Opposer is affiliated with the Applicant, or a mistaken
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`assumption that Opposer endorses the Applicant’s products.
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`27.
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`Registration of Applicant’s Applied-for Mark represents a real threat to the
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`goodwill of the AIRDOCTOR™ brand built by Opposer over years of continuous use, advertising
`
`expenditures, and sales.
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`28.
`
`That the Applied-for Mark is highly likely to cause consumer confusion with
`
`Opposer’s AIRDOCTOR™ mark means that Opposer will be damaged by registration of the
`
`Application.
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`29.
`
`30.
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`Likelihood of Confusion (15 U.S.C. § 1052(d))
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`Opposer repeats and realleges each allegation set forth above.
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`Opposer has priority in the inherently distinctive AIRDOCTOR™ mark based
`
`upon its registration and its prior use in commerce of the incontestable AIRDOCTOR® mark in
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`connection with its air cleaners and filters and its prior use in commerce of the AIRDOCTOR™
`
`mark in commerce with facemasks. Opposer began use in commerce of its inherently distinctive
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`AIRDOCTOR® mark in the United States for its air filtering products in at least as early as
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`December 2015, approximately five years before Applicant’s filing date for the Applied-for Mark
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`and the foreign registration date in Japan that it claims in its application. Further, Opposer has
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`used the AIRDOCTOR™ mark specifically in connection with facemasks since at least as early
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`as April 15, 2020, nearly 1 year prior to the filing date for the Applied-for Mark. Opposer’s use
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`has generated significant goodwill in its AIRDOCTOR™ mark in connection with its air cleaners,
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`filters, and facemasks such that consumers recognize the mark as a source identifier for Opposer’s
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`products. Such source identifying properties were acquired well in advance of the filing date of
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`10
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`
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`Applicant’s Application and the November 17, 2020 registration date of the Japanese registration
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`claimed in the Applicant’s Application.
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`31.
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`Opposer has used the AIRDOCTOR™ mark in commerce for an extended period
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`of time before any date of first use that Applicant may establish in connection with the Applied-
`
`for Mark, assuming that Applicant has even commenced use of the Applied-for Mark in the United
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`States.
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`32.
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`The Applied-for Mark is substantially similar to the AIRDOCTOR™ registered
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`and common law marks as it consists of an exact reproduction of the first portion of Opposer’s
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`Mark, namely, “Air,” and an established abbreviation for the second portion of Opposer’s Mark,
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`namely, “Dr.,” separated by a space.
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`33.
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`The letters “Dr.” are the recognized abbreviation for the word “Doctor.” See “What
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`Is
`
`the
`
`Abbreviation
`
`for
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`Doctor?,”
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`STANDS4
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`LLC,
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`https://www.abbreviations.com/abbreviation/Doctor (last visited Mar. 1, 2023).
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`34.
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`The mere addition of a space and the abbreviation of a word element are insufficient
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`to create a distinct commercial impression. As such, the Applied-for Mark is substantially similar
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`in terms of visual appearance and literally identical in terms of sound and meaning to Opposer’s
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`AIRDOCTOR™ mark. Thus, the Applied-for Mark creates the same commercial impression as
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`AIRDOCTOR™.
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`35.
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`The Applied-for Mark is confusingly similar in appearance, connotation, sound,
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`and overall commercial impression to Opposer’s AIRDOCTOR™ mark. As such, consumers
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`would ascribe “Air Dr.” as the sole source-identifying feature of the Applied-for Mark, thus
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`rendering the Applied-for Mark legally identical to AIRDOCTOR™.
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`11
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`36.
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`Applicant seeks registration for the Applied-for Mark for facemasks, which are
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`identical to the facemasks Opposer offers under its AIRDOCTOR™ mark and substantially
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`commercially related to the air cleaners and filters that Opposer offers under its registered and
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`incontestable AIRDOCTOR® mark.
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`37.
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`Applicant’s and Opposer’s goods are marketed and sold through the same trade
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`channels and targeted to the same class of consumers, namely, consumers of air filtering products
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`and facemasks. Further, because the goods here are legally identical, Applicant’s and Opposer’s
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`goods are deemed to travel in the same trade channels and to the same purchasers.
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`38.
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`The extent of potential confusion between Applicant’s Applied-for Mark and
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`Opposer’s AIRDOCTOR™ mark is thus substantial in light of the high degree of visual similarity
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`and identical pronunciation, associated goods, trade channels, and customers.
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`39.
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`Accordingly, Applicant’s Applied-for Mark so resembles Opposer’s prior used
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`AIRDOCTOR™ mark as to be likely, when used in connection with Applicant’s claimed goods,
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`to cause confusion, or to cause mistake, or to deceive under Section 2(d) of the Lanham Act, as
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`amended, 15 U.S.C. § 1052(d).
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`40.
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`Given Opposer’s superior rights in AIRDOCTOR™ for the same goods that
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`Applicant claims in the Application, Opposer believes that Applicant was aware of Opposer’s
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`mark and is intentionally attempting to trade upon the goodwill associated with Opposer’s
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`AIRDOCTOR™ mark.
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`False Suggestion of a Connection (15 U.S.C. § 1052(a))
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`Opposer repeats and realleges each allegation set forth above.
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`“Air Dr.” is the sole source-identifying feature of the Applied-for Mark, thus
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`41.
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`42.
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`rendering the Applied-for Mark legally identical to Opposer’s AIRDOCTOR™.
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`12
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`43.
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`Applicant’s Applied-for Mark would likely be recognized by consumers as being
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`owned by Opposer, due to its commercially identical nature and use in association with identical
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`goods as those offered by Opposer under AIRDOCTOR™, namely, Opposer’s facemasks, and/or
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`substantially related to the air cleaners and filters offered by Opposer under AIRDOCTOR®.
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`44.
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`Applicant’s identical goods provided under the nearly identical Applied-for Mark
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`are not in any way associated with or connected to Opposer’s goods.
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`45.
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`Opposer’s AIRDOCTOR™ mark has achieved a level of recognition in the trade
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`and the general public such that Applicant’s use of the Applied-for Mark would cause consumers
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`to presume there is a connection between Applicant and Opposer, when none exists.
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`Accordingly, pursuant to 15 U.S.C. § 1052(a), Applicant’s Applied-For Mark is not entitled
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`to registration.
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`Dated:
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`March 1, 2023
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`By: /Jeremy D. Spier/
`
`EVERSHEDS SUTHERLAND (US) LLP
`999 Peachtree Street, NE, Suite 2300
`Atlanta, Georgia 30309
`Tel: (404) 853-8926
`Fax: (404) 853-8806
`Jeremy D. Spier
`JeremySpier@eversheds-sutherland.us
`Jennifer R. Sandlin
`JenniferSandlin@eversheds-sutherland.us
`Attorneys for Opposer
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`13
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`CERTIFICATE OF SERVICE
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`I certify that a true and accurate copy of the foregoing NOTICE OF OPPOSITION was
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`served by e-mail on March 1, 2023, upon Applicant at the following email address of record:
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`trademarks@alprinlaw.com.
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`/Jeremy D. Spier/
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`Jeremy D. Spier
`EVERSHEDS SUTHERLAND (US) LLP
`999 Peachtree Street, NE, Suite 2300
`Atlanta, Georgia 30309
`Tel: (404) 853-8926
`Fax: (404) 853-8806
`JeremySpier@eversheds-sutherland.us
`
`14
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`