Notice of Opposition Opposer Information Applicant Information

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Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA1088682 Filing date: 10/14/2020

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 WILD ALASKA SALMON AND SEAFOOD, INC. Granted to Date 10/21/2020 of previous ex- tension Address 1 DJ RD KING SALMON, AK 99613 UNITED STATES

Attorney informa- BRAD R. MAURER tion DENTONS BINGHAM GREENEBAUM LLP 2700 MARKET TOWER 10 WEST MARKET STREET, IN 46204 UNITED STATES Primary Email: [email protected] Secondary Email(s): [email protected], [email protected] 3176358900

Docket Number Applicant Information

Application No. 88683504 Publication date 06/23/2020 Opposition Filing 10/14/2020 Opposition Peri- 10/21/2020 Date od Ends Applicant Wild Alaskan, Inc. 338 BERRY STREET, APT 7B BROOKLYN, NY 11249 UNITED STATES Goods/Services Affected by Opposition

Class 035. First Use: 2018/02/12 First Use In Commerce: 2018/02/12 All goods and services in the class are opposed, namely: online retail store services featuring seafood; subscription-based order fulfillment services in the field of seafood Grounds for Opposition

Priority and likelihood of confusion Trademark Act Section 2(d) Marks Cited by Opposer as Basis for Opposition

U.S. Application 88805911 Application Date 02/21/2020 No. Registration Date NONE Foreign Priority NONE Date Word Mark WILD ALASKA Design Mark Description of NONE Mark Goods/Services Class 029. First use: First Use: 2003/00/00 First Use In Commerce: 2003/00/00 Seafood, fish, shellfish, crustaceans, salmon, lox, smoked salmon, crabs, scallops, shrimp, cod, halibut, tuna, rockfish, all of the foregoing not live, salmonbur- ger patties, soups, seasonings, seafood seasonings

U.S. Application 88806341 Application Date 02/21/2020 No. Registration Date NONE Foreign Priority NONE Date Word Mark WILD ALASKA SALMON & SEAFOOD COMPANY Design Mark Description of NONE Mark Goods/Services Class 029. First use: First Use: 2003/00/00 First Use In Commerce: 2003/00/00 Seafood, fish, shellfish, crustaceans, salmon, lox, smoked salmon, crabs, scallops, shrimp, cod, halibut, tuna, rockfish, all of the foregoing not live, salmonbur- ger patties, soups, seasonings, seafood seasonings

U.S. Application 88809551 Application Date 02/25/2020 No. Registration Date NONE Foreign Priority NONE Date Word Mark WILD ALASKA SALMON & SEAFOOD COMPANY BRISTOL BAY Design Mark Description of The mark consists of a circular design having in its center a caricature of Mark thehead and shoulders of a smiling man wearing a fishing bib and a hat bearing theliteral elements BRISTOL BAY, which caricature is encircled by a ring of dots, all of which is encircled by the literalelements WILD ALASKA SALMON & SEAFOOD COMPANY, all of which is encircled by an outer ring. Goods/Services Class 029. First use: First Use: 2008/00/00 First Use In Commerce: 2008/00/00 Seafood, fish, shellfish, crustaceans, salmon, lox, smoked salmon, crabs, scallops, shrimp, cod, halibut, tuna, rockfish, all of the foregoing not live, salmonbur- ger patties, soups, seasonings, seafood seasonings

U.S. Application 88816868 Application Date 03/02/2020 No. Registration Date NONE Foreign Priority NONE Date Word Mark WILD ALASKA SALMON & SEAFOOD EST. CO 2000 Design Mark Description of The mark consists of the stylized literal elements WILD ALASKA between two Mark fanciful triangle designs, all of which appears above the stylized literal elements SALMON & SEAFOOD, all of which appears above the stylized literal elements EST. CO 2000. Goods/Services Class 029. First use: First Use: 2008/00/00 First Use In Commerce: 2008/00/00 Seafood, fish, shellfish, crustaceans, salmon, lox, smoked salmon, crabs, scallops, shrimp, cod, halibut, tuna, rockfish, all of the foregoing not live, salmonbur- ger patties, soups, seasonings, seafood seasonings

Related Proceed- Wild Alaska Salmon and Seafood, Inc. v. Wild Alaskan, Inc., Case No. ings 3:20-cv-00094-JWS, United States District Court for the District of Alaska

Attachments wildalaskanopposition21179420_1.pdf(602505 bytes )

Signature /Brad R. Maurer/ Name BRAD R. MAURER Date 10/14/2020 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

Wild Alaska Salmon and Seafood, Inc.,

Opposer, Opposition No. ______

v. Serial No. 88683504

Wild Alaskan, Inc., Mark: Applicant. Date Filed: November 7, 2019

NOTICE OF OPPOSITION

Opposer Wild Alaska Salmon and Seafood, Inc. (“Opposer” or “WASS”), a corporation

with a place of business at 1 DJ Road King Salmon, Alaska, believes that it will be harmed by

the registration of the composite mark as shown in Application Serial No.

88683504 (the “‘504 Application”) and hereby opposes its registration.

Opposer submits the following as grounds for opposition:

FACTS COMMON TO ALL GROUNDS FOR OPPOSITION

1. Opposer opposes the ‘504 Application filed on November 7, 2019, for the

composite mark for all services identified in the ‘504 Application, namely:

online retail store services featuring seafood; subscription-based order fulfillment services in the field of seafood

in International Class 35 (the “Application Services”) (a true copy of a printout from the United

States Patent and Trademark Office (“USPTO”) TSDR database reflecting the status of the ‘504

Application is attached hereto as Exhibit 1). 2. The USPTO records reflect the name and address of the current owner of the ‘504

Application is Wild Alaskan, Inc. (the “Applicant” or “WAI”), 338 Berry Street, Apt 7B

Brooklyn, New York, a corporation organized under the laws of the State of New York.

3. The USPTO records reflect the ‘504 Application was filed on November 7, 2019

(the “Filing Date”).

4. Opposer is the record owner of United States trademark Application Nos.

88805911 (the “‘911 Application”), 88806341 (the “‘341 Application), 88809262 (the “‘262

Application), 88809551 (the “‘551 Application”) and 88816868 (the “‘868 Application”) for the marks below (the ‘911 Application, the ‘341 Application, the ‘262 Application, ‘551

Application, and the ‘868 Application collectively the “Opposer’s Applications”):

Mark U.S. Serial No. Goods

WILD ALASKA Ser. No. 88805911 “Seafood, fish, shellfish, crustaceans, salmon, lox, smoked salmon, crabs, scallops, shrimp, cod, halibut, tuna, rockfish, all of the foregoing not live, salmon burger patties, soups, seasonings, seafood seasonings” in Class 29

WILD ALASKA Ser. No. 88806341 “Seafood, fish, shellfish, crustaceans, salmon, SALMON & lox, smoked salmon, crabs, scallops, shrimp, SEAFOOD cod, halibut, tuna, rockfish, all of the foregoing COMPANY not live, salmon burger patties, soups, seasonings, seafood seasonings” in Class 29 Ser. No. 88809262 “Seafood, fish, shellfish, crustaceans, salmon, lox, smoked salmon, crabs, scallops, shrimp, cod, halibut, tuna, rockfish, all of the foregoing not live, salmon burger patties, soups, seasonings, seafood seasonings” in Class 29

-2- Ser. No. 88809551 “Seafood, fish, shellfish, crustaceans, salmon, lox, smoked salmon, crabs, scallops, shrimp, cod, halibut, tuna, rockfish, all of the foregoing not live, salmon burger patties, soups, seasonings, seafood seasonings” in Class 29

Ser. No. 88816868 “Seafood, fish, shellfish, crustaceans, salmon, lox, smoked salmon, crabs, scallops, shrimp, cod, halibut, tuna, rockfish, all of the foregoing not live, salmon burger patties, soups, seasonings, seafood seasonings” in Class 29

5. Opposer’s WILD ALASKA, WILD ALASKA SALMON & SEAFOOD

COMPANY, , and marks (collectively the “Prior Marks”) enjoy actual use priority based on Opposer’s use of these marks before the filing date of the ‘504

Application and before any actual use by Applicant of the mark in the United

States.

FIRST GROUND FOR OPPOSITION – LIKELIHOOD OF CONFUSION (TRADEMARK ACT § 2(d))

6. Opposer incorporates by reference the allegations of the foregoing paragraphs of this Opposition.

-3- 7. Opposer has priority over Applicant with respect to the mark in the ‘504 Application as the filing date of the ‘504 Application, November 7, 2019, is after

Opposer’s first use of the Prior Marks in the United States.

8. On information and belief, Opposer has priority over Applicant with respect to the

mark in the ‘504 Application as the date of first use in commerce identified in the ‘504 Application is February 8, 2018, which date is after Opposer’s first use of the Prior

Marks in the United States.

9. Applicant’s mark in the ‘504 Application is confusingly similar to Opposer’s Prior Marks.

10. The mark in the ‘504 Application is likely to cause confusion, mistake, or deception as to the source, origin, affiliation, association, connection, or sponsorship of Applicant and Applicant’s services, on the one hand, with Opposer and Opposer’s goods and services associated with Opposer’s Prior Marks on the other hand.

11. Applicant’s use of the mark has caused actual consumer confusion, mistake, or deception as to the source, origin, affiliation, association, connection, or sponsorship of Applicant and Applicant’s services on the one hand with Opposer and Opposer’s goods and services associated with Opposer’s Prior Marks on the other hand.

-4- 12. The ‘504 Application has been cited as a Trademark Act Section 2(d) bar against the Opposer’s Applications in office actions issued in May 2020.

13. As a result of all of the foregoing, the maturation of the ‘504 Application into a registration would cause a likelihood of confusion, mistake, or deception as to Applicant’s association, connection or affiliation with Opposer and the goods and services offered by

Opposer under the Prior Marks, or as to the origin, or Opposer’s sponsorship or approval, of

Applicant or Applicant’s services offered under the mark.

14. Opposer would be damaged by the registration of Applicant’s mark in the ‘504 Application in that such registration would give Applicant a prima facie

exclusive right to the use of Applicant’s mark, despite the likelihood of confusion, mistake, or deception with Opposer and Opposer’s Prior Marks, described above.

15. Accordingly, the ‘504 Application should be refused.

WHEREFORE, Opposer requests that this Opposition be sustained in favor of the

Opposer, that the ‘504 Application be rejected, and that registration of the ‘504 Application be refused.

Respectfully submitted,

Date: October 14, 2020 /s/ Brad R. Maurer Brad R. Maurer DENTONS BINGHAM GREENEBAUM LLP 2700 Market Tower 10 West Market Street

-5- Indianapolis, Indiana 46204 Phone: 317.635.8900 Facsimile: 317.236.9907 [email protected] [email protected]

Attorneys for Opposer, Wild Alaska Salmon and Seafood, Inc.

CERTIFICATE OF ELECTRONIC TRANSMISSION

I hereby certify that this correspondence is being transmitted electronically to the Commissioner for Trademarks, Attn: Trademark Trial and Appeal Board, through ESTTA pursuant to C.F.R. §2.105(a), on this 14th day of October 2020.

/s/ Brad R. Maurer Brad R. Maurer DENTONS BINGHAM GREENEBAUM LLP 2700 Market Tower 10 West Market Street Indianapolis, Indiana 46204

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