Notice of Opposition Opposer Information Applicant Information

Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA653509 Filing date: 02/02/2015 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 Serendipity 3, Inc. Granted to Date 02/01/2015 of previous ex- tension Address 225 East 60th Street New York, NY 10022 UNITED STATES Attorney informa- Kieran G. Doyle tion Cowan, Liebowitz & Latman 1133 Avenue of the Americas New York, NY 10036 UNITED STATES [email protected], [email protected], [email protected], [email protected] Phone:212-790-9200 Applicant Information Application No 86227969 Publication date 08/05/2014 Opposition Filing 02/02/2015 Opposition Peri- 02/01/2015 Date od Ends Applicant Live Better Brands, LLC Suite 207 Minneapolis, MN 55401 UNITED STATES Goods/Services Affected by Opposition Class 030. First Use: 0 First Use In Commerce: 0 All goods and services in the class are opposed, namely: Grain-based chips Grounds for Opposition Other Please see the attached pleading. Attachments Notice of Opposition - SERENDIPITYS.pdf(15253 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 /Bridget A. Crawford/ Name Bridget A. Crawford Date 02/02/2015 Ref. No. 16422.000 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD In re Application Serial No.: 86/227,969 Filed: March 21, 2014 Trademark: SERENDIPITYS Published in the Official Gazette: August 5, 2014 -----------------------------------------------------------X SERENDIPITY 3, INC., Opposer, Opposition No. v. NOTICE OF OPPOSITION LIVE BETTER BRANDS, LLC, Applicant. -----------------------------------------------------------X Commissioner for Trademarks Attn: Trademark Trial and Appeal Board P.O. Box 1451 Alexandria, VA 22313-1451 Opposer Serendipity 3, Inc., a New York corporation, with offices at 225 East 60th Street, New York, New York 10022, believes that it will be damaged by registration of the standard character word mark SERENDIPITYS (“Applicant’s Mark”) for “Grain-based chips” in Class 30 as shown in application Serial No. 86/227,969, and hereby opposes the same. As grounds of opposition, it is alleged that: 1. Opposer’s Serendipity 3 restaurant was founded in 1954 and is one of New York’s best-known and most popular culinary destinations. Located near Bloomingdale’s department store on the upper east side of Manhattan, it is a favorite among tourists and locals alike and is celebrated for its homey comfort food, including appetizers and snack foods including chips. Celebrities such as Marilyn Monroe, Andy Warhol and First Lady Jacqueline Kennedy Onassis 1573215v.1 16422/000 Ref. No. 16422.000 have been counted among its regular patrons and Serendipity 3 has been the scene of several major motion pictures, including the romantic comedies Serendipity starring John Cusack and Kate Beckinsale and One Fine Day starring Michelle Pfeiffer and George Clooney. Dozens of magazines, including Gourmet, Forbes and Vanity Fair have featured Serendipity 3 stories and photo spreads, and the casts of more than a dozen Broadway shows have appeared in costume at events hosted at the restaurant. Serendipity 3’s President and sole shareholder, Stephen Bruce, has appeared on more than thirty nationally-broadcast television shows in connection with the restaurant, including two appearances on The Oprah Winfrey Show. Due to the restaurant’s fame and success, new Serendipity 3 locations were recently opened in Boca Raton and South Beach, Florida, Washington, DC, and Las Vegas, Nevada. 2. Opposer, itself and through its licensees, has used and continues to use the name and trademark SERENDIPITY, either alone or in combination with other words or designs (“Opposer’s SERENDIPITY Marks”), in connection with restaurant services, and food and beverage items including, but not limited to, appetizers and snack foods such as chips. 3. In addition to its menu items, Opposer also sells SERENDIPITY branded food products at the brick and mortar “general store” located at Opposer’s New York SERENDIPITY restaurant and online. 4. Opposer owns United States Registration Nos. 4,514,245, 1,238,663, 1,051,353, 3,285,027, 3,611,939, 1,580,753 and 4,514,246 for some of Opposer’s SERENDIPITY Marks in International Classes 3, 4, 25, 30, 42 and 43. Reg. Nos. 1,051,353, 1,238,663, 1,580,753 are incontestable. 1573215v.1 16422/000 Ref. No. 16422.000 5. As a result of Serendipity’s substantial sales, and long-time advertising and promotion of its products and services, Opposer has acquired valuable rights in Opposer’s SERENDIPITY Marks in connection with a variety of restaurant, food and beverage-related goods and services. Opposer’s SERENDIPITY Marks symbolize valuable goodwill which rightfully belongs to Opposer. 6. Since long prior to March 21, 2014, Applicant’s constructive first use date, Opposer and its licensees have promoted and advertised the offering of services and sale of goods bearing Applicant’s SERENDIPITY Marks, and have sold such goods and offered such services in commerce. 7. On to March 21, 2014, Live Better Brands, LLC filed an intent-to-use application to register Applicant’s Mark for “Grain-based chips” in Class 30. 8. The goods covered by Application No. 86/227,969 are identical and closely related to the goods on or in connection with which Opposer has used Opposer’s SERENDIPITY Marks. 9. Applicant’s Mark so resembles Opposer’s SERENDIPITY Marks as to be likely, when used in connection with Applicant’s goods, to cause confusion, to cause mistake and to deceive the trade and the public, because the public is likely to believe that Applicant’s goods have their origin with Opposer and/or that such goods are approved, endorsed or sponsored by Opposer or associated in some way with Opposer. Opposer would thereby be injured by the granting to Applicant of a certificate of registration for Applicant’s Mark. 1573215v.1 16422/000 Ref. No. 16422.000 WHEREFORE, Opposer believes that it will be damaged by registration of Applicant's Mark and prays that the opposition be sustained and said registration be denied. Please recognize as attorneys for Opposer in this proceeding Kieran G. Doyle and Bridget A. Crawford (members of the Bar of the State of New York) and the firm of Cowan, Liebowitz & Latman, 1133 Avenue of the Americas, New York, New York 10036. Please address all communications to Kieran G. Doyle, Esq. at the above address. Dated: New York, New York February 1, 2015 Respectfully submitted, COWAN, LIEBOWITZ & LATMAN, P.C. Attorneys for Opposer By: /Kieran G. Doyle/ Kieran G. Doyle Bridget A. Crawford 1133 Avenue of the Americas New York, New York 10036 Tel: (212) 790-9200 1573215v.1 16422/000 Ref. No. 16422.000 CERTIFICATE OF SERVICE I hereby certify that, on February 2, 2015 I caused a true and correct copy of the foregoing Notice of Opposition to be sent via First Class Mail, postage prepaid, to Applicant’s Attorney of Record, Thomas M. Parry, Marzouk & Parry, 1901 Pennsylvania Ave., NW, Suite 607, Washington, D.C. 20006-3405. /Bridget A. Crawford / Bridget A. Crawford 1573215v.1 16422/000 .

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