Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA614768 Filing date: 07/09/2014 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 The Coca-Cola Company Granted to Date 07/09/2014 of previous ex- tension Address One Coca-Cola Plaza Atlanta, GA 30313 UNITED STATES Attorney informa- ANDREA E BATES tion BATES & BATES LLC 1890 MARIETTA BLVD ATLANTA, GA 30318 UNITED STATES [email protected], [email protected], [email protected], [email protected] Applicant Information Application No 79132199 Publication date 03/11/2014 Opposition Filing 07/09/2014 Opposition Peri- 07/09/2014 Date od Ends International Re- 1165650 International Re- 01/22/2013 gistration No. gistration Date Applicant Narval Pharma, S.A. C/ Valle de Tena, 20 SPAIN Goods/Services Affected by Opposition Class 005. First Use: 0 First Use In Commerce: 0 All goods and services in the class are opposed, namely: Dietetic substances for medical use, namely, albumin dietary supplements, alginate dietary supplements, by-products of the processing of cereals for dietetic purposes, casein dietary supplements, dietary fibre, enzyme dietary supplements, glucose dietary supplements, lecithin dietary supplements, linseed dietary supplements, linseed oil dietary supplements,pollen dietary supplements, propolis dietary supplements, protein dietary supple- ments, royal jelly dietary supplements,starch for dietetic purposes, wheat germ dietary supplements and yeast dietary supplements; food supplements for medical use; food for babies Class 032. First Use: 0 First Use In Commerce: 0 All goods and services in the class are opposed, namely: Fruit beverages and juices; mineral waters; other non-alcoholic beverages, namely, aloe vera drinks, aperitifs, cider, cocktails, fruit nectars, iso- tonic beverages, lemonades, non-alcoholic fruit extracts used in the preparation of beverages, fruit juice beverages, non-alcoholichoney-based beverages, soda water, table waters, vegetable juices and whey beverages Grounds for Opposition False suggestion of a connection Trademark Act section 2(a) Priority and likelihood of confusion Trademark Act section 2(d) Dilution Trademark Act section 43(c) Marks Cited by Opposer as Basis for Opposition U.S. Registration 3420245 Application Date 01/26/2006 No. Registration Date 04/29/2008 Foreign Priority NONE Date Word Mark GLACÃ#AU SMARTWATER Design Mark Description of NONE Mark Goods/Services Class 032. First use: First Use: 2006/01/01 First Use In Commerce: 2006/01/01 Bottled drinking water U.S. Registration 2740881 Application Date 07/28/1998 No. Registration Date 07/29/2003 Foreign Priority NONE Date Word Mark GLACEAU SMARTWATER Design Mark Description of NONE Mark Goods/Services Class 032. First use: First Use: 1996/01/00 First Use In Commerce: 1996/01/00 BOTTLED DRINKING WATER U.S. Registration 2778914 Application Date 12/02/2000 No. Registration Date 11/04/2003 Foreign Priority NONE Date Word Mark SMARTWATER Design Mark Description of NONE Mark Goods/Services Class 032. First use: First Use: 1996/01/00 First Use In Commerce: 1996/01/00 BOTTLED DRINKING WATER U.S. Registration 2840063 Application Date 08/28/2002 No. Registration Date 05/11/2004 Foreign Priority NONE Date Word Mark GLACÃ#AU SMARTWATER Design Mark Description of The mark consists of the mark "GLACÃ#AU SMARTWATER" written vertically. Mark The word "SMARTWATER" is written in lowercase letters and in alternating em- phasized andregular font. Goods/Services Class 032. First use: First Use: 1996/01/01 First Use In Commerce: 1996/01/01 Non-alcoholic drinking water Attachments 78799834#TMSN.jpeg( bytes ) 76174464#TMSN.gif( bytes ) 78158616#TMSN.gif( bytes ) Opposition to QUO SMART DRINK.pdf(93750 bytes ) Certificate of Service The undersigned hereby certifies that a copy of this paper has been served upon all parties, at their address record by First Class Mail on this date. Signature /Andrea E Bates/ Name ANDREA E BATES Date 07/09/2014 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD THE COCA-COLA COMPANY ] ] Opposer, ] ] ] vs. ] Opposition No. ] ] ________________ ] NARVAL PHARMA, S.A., ] ] Applicant. ] __________________________________ ] OPPOSITION The Coca-Cola Company, a Delaware corporation having its principal place of business at One Coca-Cola Plaza, Atlanta, Georgia 30313, is the parent company of its wholly-owned subsidiary Energy Brands, Inc., a New York corporation, (“Energy Brands”) and believes that it would be damaged by the registration of the mark QUO SMART DRINK (“Applicant’s Alleged Mark”) for: dietetic substances for medical use, namely, albumin dietary supplements, alginate dietary supplements, by-products of the processing of cereals for dietetic purposes, casein dietary supplements, dietary fibre, enzyme dietary supplements, glucose dietary supplements, lecithin dietary supplements, linseed dietary supplements, linseed oil dietary supplements, pollen dietary supplements, propolis dietary supplements, protein dietary supplements, royal jelly dietary supplements, starch for dietetic purposes, wheat germ dietary supplements and yeast dietary supplements; food supplements for medical use; food for babies in Class 5 and fruit beverages and juices; mineral waters; other non-alcoholic beverages, namely, aloe vera drinks, aperitifs, cider, cocktails, fruit nectars, isotonic beverages, lemonades, non- alcoholic fruit extracts used in the preparation of beverages, fruit juice beverages, non- alcoholic honey-based beverages, soda water, table waters, vegetable juices and whey beverages in Class 32 (“Applicant’s Goods”), which mark is subject of International Registration No. 1165650 and U.S. Application Serial Number 79/132,199, filed on January 22, 2013, by Narval Pharma, S.A. a corporation of Spain, (“Applicant”), and published on March 11, 2014, and, by and through its undersigned attorney and in accordance with Rules 2.101 through 2.104 of the Trademark Rules of Practice, The Coca-Cola Company hereby opposes the same. The grounds for the Opposition are as follows: 1. By the application, Applicant seeks to register Applicant’s Alleged Mark as a mark for Applicant’s Goods. The Application is based on Section 66A. 2. Energy Brands and The Coca-Cola Company are engaged in the business of, among other things, bottled drinking water. Energy Brands has used in interstate commerce and is and has been at all times pertinent hereto (including since prior to the filing date of the Application), the owner of all right, title and interest in and to GLACÉAU SMARTWATER (and Design) (U.S. Reg. No. 3,420,245), GLACÉAU SMARTWATER (U.S. Reg. No. 2,740,881), SMARTWATER (U.S. Reg. No. 2,778,914), and GLACÉAU SMARTWATER (and Design) (U.S. Reg. No. 2,840,063) all used with bottled drinking water in International Class 32 (“Energy Brands’ Marks”). Energy Brands has used Energy Brands’ Marks in connection with bottled drinking water 2 in interstate commerce in and throughout the United States continuously and extensively since at least as early as 1996. 3. As a result of the widespread and extensive use, advertising and promotion by Energy Brands and The Coca-Cola Company of Energy Brands’ Marks, Energy Brands’ Marks serve to identify and distinguish Energy Brands’ products from the goods, services and businesses of others. Furthermore, Energy Brands’ Marks symbolize the goodwill of Energy Brands’ business, are well-known, and are of great value to Energy Brands and The Coca-Cola Company in connection with the offering of bottled drinking water. 4. As Energy Brands has used Energy Brands’ Marks exclusively since 1996 and Applicant, upon information and belief, has priority under Section 67 of Applicant’s Alleged Mark in as early as 2012, Energy Brands’ Marks have priority of use or priority of rights in the United States over Applicant’s Alleged Mark. 5. Upon information and belief, Applicant’s Goods and Energy Brands’ Goods are similar in types, are offered or may be offered through the same, substantially the same, and/or related channels of trade, to the same, substantially the same, and/or related classes of purchasers, and are or may be advertised, marketed and promoted through the same media channels. 6. Upon information and belief, Applicant’s Alleged Mark, when used in connection with Applicant’s Goods, so resembles Energy Brands’ Marks as to be likely to cause confusion, or to cause mistake, or to deceive with respect to the source or origin of Applicant’s Goods, with respect to Energy Brands’ sponsorship thereof or connection or affiliation therewith, and/or in other ways. 3 7. Energy Brands and The Coca-Cola Company would be damaged by the registration of Applicant’s Alleged Mark because such registration would constitute prima facie evidence of Applicant’s exclusive right to use Applicant’s Alleged Mark for and in connection with Applicant’s Goods, which would be inconsistent with and detrimental to Energy Brands’ prior and superior rights in and to Energy Brands’ Marks. 8. Applicant’s Alleged Mark falsely suggests a connection or affiliation with Energy Brands and The Coca-Cola Company, and Applicant is therefore not entitled to registration of Applicant’s Alleged Mark. WHEREFORE, The Coca-Cola Company respectfully prays that the application of NARVAL PHARMA, S.A, serial number