ESTTA Tracking number:
`
`Filing date:
`
`ESTTA1384477
`09/18/2024
`
`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
`
`HAWTHORNE LIGHTING B.V.
`
`Granted to date
`of previous ex-
`tension
`
`Address
`
`Attorney informa-
`tion
`
`09/18/2024
`
`OOSTEINDERWEG 127
`AALSMEER, 1432AH
`NETHERLANDS
`
`CHRISTOPHER M. DOLAN
`BARNES & THORNBURG LLP
`ONE NORTH WACKER DRIVE, SUITE 4400
`CHICAGO, IL 60606
`UNITED STATES
`Primary email: ipdocket@btlaw.com
`Secondary email(s): cdolan@btlaw.com, jfrick@btlaw.com, jam-
`ie.mueller@btlaw.com, Courtney.Kramer@btlaw.com
`No phone number provided
`
`Docket no.
`
`69054.248655
`
`Applicant information
`
`Application no.
`
`98124908
`
`09/18/2024
`
`Opposition filing
`date
`
`Applicant
`
`Publication date
`
`05/21/2024
`
`Opposition period
`ends
`
`09/18/2024
`
`Shenzhen Stonebridge Business Consulting Co., Ltd.
`2P01-B261, RONGHUIFU BLDG 1-A, WUHE
`BIGUIYUAN, BANTIAN ST., LONGGANG DIST.
`SHENZHEN, 518000
`CHINA
`
`Goods/services affected by opposition
`
`Class 011. First Use: Jun 4, 2023 First Use In Commerce: Jun 4, 2023
`All goods and services in the class are opposed, namely: Chandeliers; Luminaries; Ceiling fans; Desk
`lamps; Electric fans; Electric light bulbs; LED lamps; LED light bulbs; LED luminaires; Portable elec-
`tric fans; Reading lights; Roof fans; USB-powered desktop fans; Vehicle headlights; Wall lamps
`
`Grounds for opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`Mark cited by opposer as basis for opposition
`
`U.S. registration
`no.
`
`5372436
`
`Application date
`
`10/09/2015
`
`

`

`Register
`
`Principal
`
`Registration date
`
`01/09/2018
`
`Word mark
`
`Design mark
`
`AGROLUX
`
`Foreign priority
`date
`
`NONE
`
`Description of
`mark
`
`Goods/services
`
`NONE
`
`Class 011. First use: First Use: 2002 First Use In Commerce: Jul 14, 2012
`Lighting fixtures, including lighting equipment for agriculture and horticulture; as-
`similation lights for use in growing plants, grow lamps for use in growing plants;
`light reflectors, lighting fixtures and parts thereof
`Class 035. First use: First Use: 2002 First Use In Commerce: Jul 14, 2012
`Import and export agencies and wholesale and retail store services featuring
`lighting fixtures, assimilation lights, growth lamps, choking coils for growth
`lamps, light reflectors, lighting fixtures and parts thereof
`
`Attachments
`
`86782969#TMSN.png( bytes )
`2024-09-18 - OMS Notice of Opposition - ORGALUX.pdf(363723 bytes )
`
`Signature
`
`/Christopher M. Dolan/
`
`Name
`
`Date
`
`CHRISTOPHER M. DOLAN
`
`09/18/2024
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposer,
`
`
`
`v.
`
`Hawthorne Lighting B.V.,
`
`
`
`
`
`Shenzhen Stonebridge Business Consulting
`Co., Ltd.,
`
`
`
`Applicant.
`
`
`
`Opposition No. _____________
`
`Mark: ORGALUX
`
`Serial No.: 98124908
`
`
`
`
`
`
`
`
`
`
`
`NOTICE OF OPPOSITION
`
`Hawthorne Lighting B.V., a besloten vennootschap duly organized and existing under the
`
`laws of the Netherlands, with an office at Oosteinderweg 127, Aasmeer, Netherlands 1432AH
`
`(“Opposer”), believes that it will be damaged by registration of the mark ORGALUX that is the
`
`subject of United States Trademark Application Serial No. 98124908 (the “Opposed Mark”), filed
`
`in the name of Shenzhen Stonebridge Business Consulting Co., Ltd. (“Applicant”), a Chinese
`
`limited company with an address at 2P01-B261, Ronghuifu Bldg 1-A, Wuhe, Biguiyuan, Bantian
`
`St., Longgang Dist., Shenzhen, China 518000 and therefore hereby opposes such registration
`
`pursuant to 15 U.S.C. § 1063.
`
`In support of its opposition, Opposer states as follows:
`
`1.
`
`Applicant is the owner of Application Serial No. 98124908 (the “Subject
`
`Application”) for the Opposed Mark, filed on August 9, 2023, reciting “Chandeliers; Luminaries;
`
`Ceiling fans; Desk lamps; Electric fans; Electric light bulbs; LED lamps; LED light bulbs; LED
`
`luminaires; Portable electric fans; Reading lights; Roof fans; USB-powered desktop fans; Vehicle
`
`headlights; Wall lamps” in International Class 11 (the “Applied-for-Goods”).
`
`2.
`
`Opposer itself and through its affiliates, has been and is now, extensively engaged
`
`
`
`

`

`
`
`in the business of marketing and selling, in interstate commerce, various goods and services,
`
`including lighting fixtures and equipment and related services. In connection with the marketing
`
`and sale of such goods and services, Opposer has extensively used, since well prior to Applicant’s
`
`filing date and alleged first use date, and continues to use, the mark AGROLUX. Opposer has used
`
`its AGROLUX mark in U.S. commerce since at least as early as 2012.
`
`3.
`
`In addition to longstanding common law trademark rights in the AGROLUX mark,
`
`Opposer owns the following United States federal trademark registration on the Principal Register
`
`for the mark (Opposer’s common law and registered trademark rights hereinafter collectively
`
`referred to as the “AGROLUX Mark”):
`
`Mark
`
`Reg. No.
`
`Goods/Services
`
`AGROLUX
`
`5372436 Class 11: Lighting fixtures, including lighting equipment for agriculture
`and horticulture; assimilation lights for use in growing plants, grow lamps
`for use in growing plants; light reflectors, lighting fixtures and parts thereof
`
`Class 35: Import and export agencies and wholesale and retail store services
`featuring lighting fixtures, assimilation lights, growth lamps, choking coils
`for growth lamps, light reflectors, lighting fixtures and parts thereof
`
`
`
`This registration is valid, subsisting and in full force and effect. See printout from the USPTO’s
`
`TSDR database, attached hereto as Exhibit A, showing the current status and title of the foregoing
`
`registration.
`
`4.
`
`Opposer’s AGROLUX Mark is strong and distinctive. Opposer’s goods and
`
`services offered in connection with the Mark have been, and continue to be marketed and sold in
`
`United States commerce. Further, Opposer and its affiliates have extensively promoted and sold
`
`Opposer’s goods and services in connection with the AGROLUX Mark in the United States. By
`
`reason of such advertising, promotion and sale of Opposer’s goods and services under the
`
`AGROLUX Mark, Opposer has developed substantial goodwill and strong common law trademark
`
`
`
`2
`
`

`

`
`
`rights in connection with the Mark.
`
`5.
`
`Notwithstanding Opposer’s longstanding prior rights in and to the AGROLUX
`
`Mark, on August 9, 2023, Applicant filed the Subject Application to register the Opposed Mark
`
`for the Applied-for-Goods. At the time it filed the Subject Application, Applicant had at least
`
`constructive knowledge of Opposer’s rights in the AGROLUX Mark.
`
`6.
`
`Opposer’s rights in the AGROLUX Mark predate Applicant’s claimed rights in the
`
`Opposed Mark.
`
`7.
`
`The Opposed Mark is confusingly similar, in appearance, sound, meaning, and
`
`commercial impression to Opposer’s AGROLUX Mark. Applicant’s registration and use of the
`
`Opposed Mark in association with the Applied-For Goods is likely to cause confusion as to the
`
`source or origin of those Goods, and is likely to mislead consumers, all to Opposer’s damage.
`
`8.
`
`The goods and services that Opposer provides under the AGROLUX Mark are
`
`identical and, at a minimum, closely related or similar to the Applied-for-Goods, and the goods
`
`are offered to identical, similar or overlapping classes of purchasers.
`
`9.
`
`The Opposed Mark, when used in connection with the Applied-for-Goods, is likely
`
`to cause confusion, to cause mistake, and to deceive the trade and public, who, upon seeing the
`
`Opposed Mark in connection with the Applied-for-Goods, would believe that such goods originate
`
`with, are approved, sponsored or endorsed by, or have some connection or affiliation with
`
`Opposer. Accordingly, registration of the Opposed Mark would damage Opposer, and registration
`
`therefore should be refused pursuant to Section 2(d) of the Trademark Act.
`
`10. WHEREFORE, Opposer believes that it will be damaged by registration of the
`
`Opposed Mark, and therefore respectfully requests that such registration be refused.
`
`The Director is hereby authorized to charge the filing fee for this Notice of Opposition to
`
`
`
`3
`
`

`

`
`
`Deposit Account No. 12-0913.
`
`Date: September 18, 2024
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`
`
`
`By: /Christopher M. Dolan/
`Christopher M. Dolan
`Joshua S. Frick
`BARNES & THORNBURG LLP
`One North Wacker Drive, Suite 4400
`Chicago, Illinois 60606-2833
`Attorneys for Opposer
`
`4
`
`

`

`Exhibit A
`Exhibit A
`
`

`

`For assistance with TSDR, email teas@uspto.gov and include your serial number, the document you are looking for, and a screenshot of any error
`messages you have received.
`
`STATUS
`
`DOCUMENTS
`
`MAINTENANCE
`
`Back to Search
`
`Print
`
`Generated on: This page was generated by TSDR on 2024-09-18 13:54:56 EDT
`
`Mark: AGROLUX
`
`US Serial Number: 86782969
`
`US Registration Number: 5372436
`
`Filed as TEAS RF: Yes
`
`Register: Principal
`
`Mark Type: Trademark, Service Mark
`
`TM5 Common Status
`Descriptor:
`
`Application Filing Date: Oct. 09, 2015
`
`Registration Date: Jan. 09, 2018
`
`Currently TEAS RF: Yes
`
`LIVE/REGISTRATION/Issued and Active
`
`The trademark application has been registered with the Office.
`
`Status: Registered. The registration date is used to determine when post-registration maintenance documents are due.
`
`Status Date: Jan. 09, 2018
`
`Publication Date: Oct. 24, 2017
`
`Mark Information
`
`Mark Literal Elements: AGROLUX
`
`
`
`Standard Character Claim: Yes. The mark consists of standard characters without claim to any particular font style, size, or color.
`
`Mark Drawing Type: 4 - STANDARD CHARACTER MARK
`
`Goods and Services
`
`Note:
`The following symbols indicate that the registrant/owner has amended the goods/services:
`Brackets [..] indicate deleted goods/services;
`Double parenthesis ((..)) identify any goods/services not claimed in a Section 15 affidavit of incontestability; and
`Asterisks *..* identify additional (new) wording in the goods/services.
`For: Lighting fixtures, including lighting equipment for agriculture and horticulture; assimilation lights for use in growing plants, grow lamps for
`use in growing plants; light reflectors, lighting fixtures and parts thereof
`
`International Class(es): 011 - Primary Class
`
`U.S Class(es): 013, 021, 023, 031, 034
`
`Class Status: ACTIVE
`
`Basis: 1(a)
`
`First Use: 2002
`
`Use in Commerce: Jul. 14, 2012
`
`For:
`
`Import and export agencies and wholesale and retail store services featuring lighting fixtures, assimilation lights, growth lamps, choking
`coils for growth lamps, light reflectors, lighting fixtures and parts thereof
`
`International Class(es): 035 - Primary Class
`
`U.S Class(es): 100, 101, 102
`
`Class Status: ACTIVE
`
`Basis: 1(a)
`
`First Use: 2002
`
`Basis Information (Case Level)
`
`Use in Commerce: Jul. 14, 2012
`
`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 44D: No
`
`Currently 44E: No
`
`Currently 66A: No
`
`Currently No Basis: No
`
`Current Owner(s) Information
`
`Owner Name: HAWTHORNE LIGHTING B.V.
`
`Owner Address: OOSTEINDERWEG 127
`AALSMEER NETHERLANDS 1432AH
`
`Legal Entity Type: BESLOTEN VENNOOTSCHAP (B.V.)
`
`Attorney/Correspondence Information
`
`Attorney of Record
`Attorney Name: Kiranjit K Dharsan
`
`State or Country Where
`Organized:
`
`NETHERLANDS
`
`Attorney Primary Email
`Address:
`
`Correspondent
`Correspondent
`Name/Address:
`
`kiran@seiterlegalstudio.com
`
`Attorney Email Authorized: Yes
`
`SEITER LEGAL STUDIO
`2450 Colorado Ave., Suite 100E
`Santa Monica, CALIFORNIA US 90404
`
`Correspondent e-mail: kiran@seiterlegalstudio.com
`trademarks@scotts.com
`
`Correspondent e-mail
`Authorized:
`
`Yes
`
`Domestic Representative
` Domestic Representative
`Name:
`
` Domestic Representative
`e-mail:
`
`Robert J. Morgan
`
`trademarks@scotts.com
`
`Prosecution History
`
` Domestic Representative
`e-mail Authorized:
`
`Yes
`
`Date
`Jul. 20, 2024
`
`Jul. 20, 2024
`
`Jan. 08, 2024
`
`Jan. 05, 2024
`
`Jan. 05, 2024
`
`Jan. 05, 2024
`
`Jan. 05, 2024
`
`Jan. 05, 2024
`
`Jan. 05, 2024
`
`Oct. 11, 2023
`
`Jan. 09, 2023
`
`Jun. 21, 2021
`
`Jun. 21, 2021
`
`Jun. 21, 2021
`
`Jun. 21, 2021
`
`Jun. 21, 2021
`
`Proceeding Number
`
`Description
`POST REGISTRATION ACTION MAILED - SEC. 8 & 15
`
`CASE ASSIGNED TO POST REGISTRATION PARALEGAL
`
`TEAS SECTION 8 & 15 RECEIVED
`
`TEAS CHANGE OF CORRESPONDENCE RECEIVED
`
`TEAS CHANGE OF DOMESTIC REPRESENTATIVES ADDRESS
`
`ATTORNEY/DOM.REP.REVOKED AND/OR APPOINTED
`
`TEAS REVOKE/APP/CHANGE ADDR OF ATTY/DOM REP RECEIVED
`
`APPLICANT/CORRESPONDENCE CHANGES (NON-RESPONSIVE)
`ENTERED
`
`TEAS CHANGE OF OWNER ADDRESS RECEIVED
`
`ASSIGNMENT OF OWNERSHIP NOT UPDATED AUTOMATICALLY
`
`COURTESY REMINDER - SEC. 8 (6-YR) E-MAILED
`
`APPLICANT/CORRESPONDENCE CHANGES (NON-RESPONSIVE)
`ENTERED
`
`TEAS CHANGE OF CORRESPONDENCE RECEIVED
`
`ATTORNEY/DOM.REP.REVOKED AND/OR APPOINTED
`
`TEAS REVOKE/APP/CHANGE ADDR OF ATTY/DOM REP RECEIVED
`
`TEAS CHANGE OF OWNER ADDRESS RECEIVED
`
`

`

`Jun. 19, 2021
`
`Jun. 19, 2021
`
`Jun. 19, 2021
`
`Jun. 19, 2021
`
`Jun. 19, 2021
`
`Jun. 19, 2021
`
`Jul. 10, 2019
`
`Jan. 09, 2018
`
`Oct. 24, 2017
`
`Oct. 24, 2017
`
`Oct. 04, 2017
`
`Sep. 18, 2017
`
`Sep. 16, 2017
`
`Sep. 14, 2017
`
`May 14, 2017
`
`May 14, 2017
`
`Mar. 13, 2017
`
`Sep. 12, 2016
`
`Sep. 12, 2016
`
`Sep. 12, 2016
`
`Aug. 15, 2016
`
`Aug. 15, 2016
`
`Jul. 28, 2016
`
`Jul. 21, 2016
`
`Mar. 26, 2016
`
`Feb. 01, 2016
`
`Feb. 01, 2016
`
`Feb. 01, 2016
`
`Feb. 01, 2016
`
`Oct. 16, 2015
`
`Oct. 15, 2015
`
`Oct. 13, 2015
`
`APPLICANT/CORRESPONDENCE CHANGES (NON-RESPONSIVE)
`ENTERED
`
`TEAS CHANGE OF CORRESPONDENCE RECEIVED
`
`TEAS WITHDRAWAL OF ATTORNEY RECEIVED-FIRM RETAINS
`
`ATTORNEY/DOM.REP.REVOKED AND/OR APPOINTED
`
`TEAS REVOKE/APP/CHANGE ADDR OF ATTY/DOM REP RECEIVED
`
`TEAS CHANGE OF OWNER ADDRESS RECEIVED
`
`AUTOMATIC UPDATE OF ASSIGNMENT OF OWNERSHIP
`
`REGISTERED-PRINCIPAL REGISTER
`
`OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED
`
`PUBLISHED FOR OPPOSITION
`
`NOTIFICATION OF NOTICE OF PUBLICATION E-MAILED
`
`LAW OFFICE PUBLICATION REVIEW COMPLETED
`
`APPROVED FOR PUB - PRINCIPAL REGISTER
`
`SUSPENSION CHECKED - TO ATTORNEY FOR ACTION
`
`APPLICANT/CORRESPONDENCE CHANGES (NON-RESPONSIVE)
`ENTERED
`
`TEAS CHANGE OF OWNER ADDRESS RECEIVED
`
`REPORT COMPLETED SUSPENSION CHECK CASE STILL SUSPENDED
`
`NOTIFICATION OF LETTER OF SUSPENSION E-MAILED
`
`LETTER OF SUSPENSION E-MAILED
`
`SUSPENSION LETTER WRITTEN
`
`TEAS/EMAIL CORRESPONDENCE ENTERED
`
`CORRESPONDENCE RECEIVED IN LAW OFFICE
`
`ASSIGNED TO LIE
`
`TEAS RESPONSE TO OFFICE ACTION RECEIVED
`
`TEAS CHANGE OF CORRESPONDENCE RECEIVED
`
`NOTIFICATION OF NON-FINAL ACTION E-MAILED
`
`NON-FINAL ACTION E-MAILED
`
`NON-FINAL ACTION WRITTEN
`
`ASSIGNED TO EXAMINER
`
`NOTICE OF PSEUDO MARK E-MAILED
`
`NEW APPLICATION OFFICE SUPPLIED DATA ENTERED
`
`NEW APPLICATION ENTERED
`
`TM Staff and Location Information
`
`TM Staff Information - None
`File Location
`Current Location: Historical data usage
`
`Assignment Abstract Of Title Information
`
`Summary
`
`Total Assignments: 2
`
`Assignment 1 of 2
`
`Conveyance: CHANGE OF NAME
`
`Reel/Frame: 8216/0008
`
`Date Recorded: Oct. 03, 2023
`
`Supporting Documents: assignment-tm-8216-0008.pdf
`
`Date in Location: Jul. 20, 2024
`
`Conveyance Filter
`
`Registrant: Agrolux Holding B.V.
`
`
`
`Pages: 31
`
`

`

`Assignor
`
`Assignee
`
`Name: HAWTHORNE LIGHTING B.V.
`
`Execution Date: Jun. 22, 2016
`
`Legal Entity Type: BESLOTEN VENNOOTSCHAP (B.V.)
`
`State or Country Where
`Organized:
`
`No Place of Organization Found
`
`Name: HAWTHORNE GARDENING B.V.
`
`Legal Entity Type: BESLOTEN VENNOOTSCHAP (B.V.)
`
`Address: NARITAWEG 8
`EL ROZENBURG, NETHERLANDS 1437
`
`State or Country Where
`Organized:
`
`NETHERLANDS
`
`Correspondent
`Correspondent Name: ROBERT J. MORGAN
`
`Correspondent Address: 14111 SCOTTSLAWN ROAD
`MARYSVILLE, OH 43041
`
`Domestic Representative
`Domestic Representative
`Name:
`
`ROBERT J. MORGAN
`
`Domestic Representative
`Address:
`
`14111 SCOTTSLAWN ROAD
`MARYSVILLE, OH 43041
`
`Assignment 2 of 2
`
`Conveyance: CHANGE OF NAME
`
`Reel/Frame: 6685/0824
`
`Date Recorded: Jul. 03, 2019
`
`Supporting Documents: assignment-tm-6685-0824.pdf
`
`Pages: 35
`
`Assignor
`
`Assignee
`
`Name: AGROLUX HOLDING B.V.
`
`Legal Entity Type: BESLOTEN VENNOOTSCHAP (B.V.)
`
`Execution Date: Sep. 21, 2018
`
`State or Country Where
`Organized:
`
`NETHERLANDS
`
`State or Country Where
`Organized:
`
`NETHERLANDS
`
`Name: HAWTHORNE LIGHTING B.V.
`
`Legal Entity Type: BESLOTEN VENNOOTSCHAP (B.V.)
`
`Address: LEEMOLEN 68
`2678 MH DE LIER, NETHERLANDS
`
`Correspondent
`Correspondent Name: ROBERT J. MORGAN
`
`Correspondent Address: 14111 SCOTTSLAWN RD.
`MARYSVILLE, OH 43041
`
`Domestic Representative - Not Found
`
`Proceedings - Click to Load
`
`