Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA994667 Filing date: 08/13/2019 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 Starbucks Corporation Granted to Date 08/21/2019 of previous ex- tension Address 2401 UTAH AVENUE SOUTH SEATTLE, WA 98134 UNITED STATES Attorney informa- JULIA ANNE MATHESON tion HOGAN LOVELLS US LLP 555 13TH STREET, NW WASHINGTON, DC 20004 UNITED STATES [email protected], [email protected], dct- [email protected], [email protected] 202-637-5600 Applicant Information Application No 88202494 Publication date 04/23/2019 Opposition Filing 08/13/2019 Opposition Peri- 08/21/2019 Date od Ends Applicant Mountains and Mermaids, LLC PO BOX 871882 Wasilla, AK 99687 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: Coffee beans; Ground coffee beans Grounds for Opposition Priority and likelihood of confusion Trademark Act Section 2(d) Dilution by blurring Trademark Act Sections 2 and 43(c) Marks Cited by Opposer as Basis for Opposition U.S. Registration 1417602 Application Date 06/03/1985 No. Registration Date 11/18/1986 Foreign Priority NONE Date Word Mark STARBUCKS Design Mark Description of NONE Mark Goods/Services Class 030. First use: First Use: 1971/03/29 First Use In Commerce: 1971/03/29 COFFEE, TEA, SPICES, HERB TEA, CHOCOLATE, AND COCOA Class 031. First use: First Use: 1971/03/29 First Use In Commerce: 1971/03/29 [ UNPOPPED POPCORN ] Class 035. First use: First Use: 1971/03/29 First Use In Commerce: 1971/03/29 COFFEE DISTRIBUTION SERVICES AND RETAILSTORE SERVICES Class 043. First use: First Use: 1971/03/29 First Use In Commerce: 1971/03/29 COFFEE BAR SERVICES U.S. Registration 1098925 Application Date 07/14/1976 No. Registration Date 08/08/1978 Foreign Priority NONE Date Word Mark STARBUCKS COFFEE-TEA-SPICES Design Mark Description of NONE Mark Goods/Services Class 030. First use: First Use: 1971/03/29 First Use In Commerce: 1971/03/29 COFFEE, TEA, SPICES AND COCOA U.S. Registration 1542775 Application Date 01/11/1988 No. Registration Date 06/06/1989 Foreign Priority NONE Date Word Mark STARBUCKS COFFEE Design Mark Description of NONE Mark Goods/Services Class 030. First use: First Use: 1987/10/23 First Use In Commerce: 1987/10/23 [ COFFEE ] Class 043. First use: First Use: 1987/10/23 First Use In Commerce: 1987/10/23 RESTAURANT SERVICES FEATURING COFFEE AND ESPRESSO BEVER- AGES AND ALSO SERVING SANDWICHES AND BREAKFASTS U.S. Registration 1815937 Application Date 01/15/1993 No. Registration Date 01/11/1994 Foreign Priority NONE Date Word Mark STARBUCKS COFFEE Design Mark Description of The mark is lined to indicate the colorgreen. Color is claimed as a feature of the Mark mark. Goods/Services Class 021. First use: First Use: 1992/10/20 First Use In Commerce: 1992/10/20 [ hand operated coffee grinders and coffee mills, ] non electric coffee makers,insulated cups, reusable non paper coffee filters, [ beverage stowaways (cup holders for use on car and boat dashboards), ] non paper coasters, thermal insulated bottles, and housewares; namely, coffee cups, non electric coffee pots not ofprecious metal, cups, mugs, dishes, trivets, and canisters Class 030. First use: First Use: 1992/09/01 First Use In Commerce: 1992/09/01 ground and whole bean coffee, cocoa, [ tea, ] powdered chocolate [ and powderedvanilla, muffins, pastries, cookies, breads, granola, and candy; namely, chocolates, chocolate covered coffee beans, chocolate covered cher- ries, and chocolate covered almonds ] Class 035. First use: First Use: 1992/08/30 First Use In Commerce: 1992/08/30 retail store services featuring of all of the above goods as well as decorative- magnets, [ paper coffee filters, ] and electric appliances; namely, power oper- ated coffee grinders, espresso makers, coffee makers, percolators, and coffee pots; [ distributorship services of all theforegoing goods; ] Class 043. First use: First Use: 1992/08/30 First Use In Commerce: 1992/08/30 restaurant and cafe services U.S. Registration 1815938 Application Date 01/15/1993 No. Registration Date 01/11/1994 Foreign Priority NONE Date Word Mark STARBUCKS COFFEE Design Mark Description of NONE Mark Goods/Services Class 021. First use: First Use: 1992/10/20 First Use In Commerce: 1992/10/20 [ hand operated coffee grinders and coffee mills, ] non electric coffee makers,insulated cups, reusable non paper coffee filters, [ beverage stowaways (cup holders for use on car and boat dashboards), ] non paper coasters, thermal insulated bottles, and housewares; namely, coffee cups, non electric coffee pots not ofprecious metal, cups, mugs, dishes, trivets, and canisters Class 030. First use: First Use: 1992/09/01 First Use In Commerce: 1992/09/01 ground and whole bean coffee, cocoa, [ tea, ] powdered chocolate [ and powderedvanilla, muffins, pastries, cookies, breads, granola, and candy; namely, chocolates, chocolate covered coffee beans, chocolate covered cher- ries, and chocolate covered almonds ] Class 035. First use: First Use: 1992/08/30 First Use In Commerce: 1992/08/30 retail store services featuring the above goods as well as decorative magnets, [ paper coffee filters, ] and electric appliances; namely, power operated coffee- grinders, espresso makers, coffee makers, percolators, and coffee pots; [ distrib- utorship services of all the foregoinggoods; ] Class 043. First use: First Use: 1992/08/30 First Use In Commerce: 1992/08/30 restaurant and cafe services U.S. Registration 1943361 Application Date 07/26/1993 No. Registration Date 12/26/1995 Foreign Priority NONE Date Word Mark STARBUCKS COFFEE Design Mark Description of NONE Mark Goods/Services Class 030. First use: First Use: 1993/04/30 First Use In Commerce: 1993/04/30 flavoring syrups for beverages U.S. Registration 2120653 Application Date 10/18/1994 No. Registration Date 12/09/1997 Foreign Priority NONE Date Word Mark STARBUCKS COFFEE Design Mark Description of NONE Mark Goods/Services Class 030. First use: First Use: 1995/07/31 First Use In Commerce: 1995/07/31 ready-to-drink coffee, ready-to-drink coffee based beverages Class 032. First use: First Use: 1995/07/31 First Use In Commerce: 1995/07/31 coffee-flavored soft drink, flavored soft drinks and syrups and extracts for mak- ing the foregoing U.S. Registration 2091941 Application Date 10/05/1995 No. Registration Date 08/26/1997 Foreign Priority NONE Date Word Mark STARBUCKS COFFEE Design Mark Description of NONE Mark Goods/Services Class 030. First use: First Use: 1996/03/30 First Use In Commerce: 1996/03/30 [ ice cream, ] flavored ices and frozenconfections U.S. Registration 2266351 Application Date 11/07/1997 No. Registration Date 08/03/1999 Foreign Priority NONE Date Word Mark STARBUCKS COFFEE Design Mark Description of The mark consists of the wording "STARBUCKS COFFEE" in a circular seal Mark with twostars, the color green which is in the nature of emerald green, PMS Col- or 3425(c), and design of a siren (a two-tailed mermaid) wearing a crown. Goods/Services Class 030. First use: First Use: 1992/10/20 First Use In Commerce: 1992/10/20 ground and whole bean coffee; cocoa; herbal and non-herbal teas; coffee, tea, cocoa and espresso beverages, and beverages made with a base of coffee and/ or espresso, instant coffee [ and coffee substitutes ] ; ready-to-drink coffee beverages; [ liquid and powdered beverage mixes; powdered flavorings; ] flavor- ing syrups for beverages; baked goods, namely, muffins, scones, biscuits, cook- ies, pastries and breads [ and ready-to-make mixes of the same ] ; ice cream and frozen confections; chocolate; candy and confections and ready-to-eat cer- eals; all of the foregoing goods U.S. Registration 2553708 Application Date 02/28/2000 No. Registration Date 03/26/2002 Foreign Priority NONE Date Word Mark CUSTOM ROAST ROASTED BY STARBUCKS COFFEE CO. TRADE MARK Design Mark Description of NONE Mark Goods/Services Class 030. First use: First Use: 2000/05/00 First Use In Commerce: 2000/05/00 ground and whole bean coffee U.S. Registration 3298945 Application Date 02/15/2005 No. Registration Date 09/25/2007 Foreign Priority NONE Date Word Mark STARBUCKS COFFEE Design Mark Description of The mark consists of the wording "Starbucks Coffee" in a circular seal with Mark twostars, and design of a siren (a two-tailed mermaid) wearing a crown. Goods/Services Class 030. First use: First Use: 2004/03/31 First Use In Commerce: 2004/03/31 Coffee [ ; tea; cocoa; prepared coffee and coffee-based beverages; prepared espresso and espresso-based beverages; beverages made of tea; powdered chocolate and vanilla; flavoring syrups to add to beverages; baked goods, namely, muffins, scones, biscuits, cookies, pastries and breads; sandwiches; hot and cold ready-to-eat fruit and whole grain based breakfast cereal; iced tea, ready-to-drink tea;chocolate food beverages not being dairy-based or vegetable based; (( chocolatefood beverages not being dairy-based orvegetable based with coffee flavors; ))cocoa products, namely, cocoa mixes andcocoa powder; hot chocolate; (( cocoa beverages with milk; )) prepared cocoa and cocoa-based beverages; preparations for making chocolate or cocoa based drinks, namely, li- quid and powdered hot chocolate mix and liquid and powdered hot cocoa mix; chocolate and candy, namely, chocolates, chocolate bars, chocolate-covered coffee beans, chocolate truffles, chocolate-covered fruits, chocolate-covered nuts, chocolate-covered dried fruits, chocolate-covered crackers and chocolate toppings ] U.S. Registration 3931909 Application Date 08/19/2009 No. Registration Date 03/15/2011 Foreign Priority NONE Date Word Mark STARBUCKS Design Mark Description of The mark consists of a concentric circle design with the word "STARBUCKS" Mark and acircular seal containing the design of a siren (a two-tailed mermaid) wear- ing acrown.