Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA990576 Filing date: 07/26/2019 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 Yarnell Ice Cream, LLC Granted to Date 08/07/2019 of previous ex- tension Address 1133 W 35TH ST % SCHULZE & BURCH CHICAGO, IL 60609 UNITED STATES Correspondence DANIEL KEGAN information KEGAN & KEGAN, LTD 79 W MONROE ST #1310 CHICAGO, IL 60603-4931 UNITED STATES [email protected] 3127826495 Applicant Information Application No 88202127 Publication date 04/09/2019 Opposition Filing 07/26/2019 Opposition Peri- 08/07/2019 Date od Ends Applicant RIP VAN WAFELS, INC. 67 WEST ST #705 BROOKLYN, NY 11222 UNITED STATES Goods/Services Affected by Opposition Class 030. First Use: 2018/11/01 First Use In Commerce: 2018/11/01 All goods and services in the class are opposed, namely: Cookies; Waffles Grounds for Opposition Priority and likelihood of confusion Trademark Act Section 2(d) Marks Cited by Opposer as Basis for Opposition U.S. Registration 2120649 Application Date 01/11/1993 No. Registration Date 12/09/1997 Foreign Priority NONE Date Word Mark GUILT FREE Design Mark Description of NONE Mark Goods/Services Class 030. First use: First Use: 1996/09/30 First Use In Commerce: 1996/09/30 frozen confections U.S. Registration 2316804 Application Date 04/15/1999 No. Registration Date 02/08/2000 Foreign Priority NONE Date Word Mark GUILT FREE Design Mark Description of NONE Mark Goods/Services Class 030. First use: First Use: 1991/11/22 First Use In Commerce: 1991/11/22 Frozen Dairy Confections Attachments 75683376#TMSN.png( bytes ) SbY-RipVanW-Tmo-26July2019.pdf(111573 bytes ) SbY-RipvW-x1-7.pdf(833318 bytes ) Signature /daniel kegan/ Name DANIEL KEGAN Date 07/26/2019 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD YARNELL ICE CREAM, LLC ) Indulge Without The Guilt Opposer, ) Serial No. 88-202,127 v ) Filed 21 Nov 2018 RIP VAN WAFELS, INC ) Published 9 Apr 2019 Applicant. ) International Class 30 NOTICE OF OPPOSITION Yarnell Ice Cream, LLC, a Delaware LLC, with business address at 1133 W 35th St, Chicago IL 60609 (“Yarnell,” “Opposer,” or “Registrant”) believes that it will be damaged by registration of the mark shown above, Sn 88-202,127, because the mark is likely to cause confusion, mistake, and/or deception with Opposer’s family of GUILT FREE trademarks for foods, including frozen confections. Applicant, Rip Van Wafels, Inc asserts by its application its business address is 67 West St #705, Brooklyn NY 11222. Opposer appoints as its attorneys in this opposition Daniel L Kegan and Jay R Giusti, attorneys duly licensed by the Supreme Court of the State of Illinois, whose post office addresses are 79 W Monroe St #1310, Chicago IL 60603-4931. All communications are to be held with lead attorney Daniel Kegan. As grounds for opposition, Opposer alleges the following. 1. Opposer owns the trademark GUILT FREE for various foods, including frozen confections and ice cream. 2. Opposer owns the valid United States Trademark Registration 2,120,649, issued 9 December 1997, for GUILT FREE for frozen confections, with first Yarnell v Rip Van Wafels • Sn 88-202,127 • Indulge Without The Guilt • Opposition Notice Page 1 use at least as early as September 1996. (See Exhibit 1, Registration, and Exhibit 2, TESS report). 3. Opposer owns the valid United States Trademark Registration 2,316,804, issued 8 February 2000, for GUILT FREE for frozen dairy confections. (See Exhibit 3, Registration, and Exhibit 4, TESS report). 4. Opposer, directly or through licensees, has used its GUILT FREE trademarks for foods since at least as early as September 1996 and has not abandoned them. 5. Opposer or its licensees have used its GUILT FREE trademark on diverse foods, including: Frozen dairy confections, Frozen confections, Restaurant services, Rolls doughnuts, muffins, cookies, Chocolate pies, Jams, jellies, butter, margarine, eggs, and toppings, namely dairy-based whipped toppings and non-dairy based whipped toppings; cocoa, gravies puddings and dairy- based desserts; soft drinks, namely, non-carbonated soft drinks, Processed meat, Non-dairy dips, Processed nuts, Peanut butter; Catsup, and barbeque sauce, Toppings, namely, fruit toppings, Not frozen yogurt and egg nog, Dips, namely dairy-based dips, Cottage cheese, sour cream, and milk, Toppings, namely, chocolate syrup and fudge topping, Cakes, candy, pies, namely fruit pies, dairy-based spreads and cheese; Cheese cakes, syrup, namely, chocolate syrup and table syrup, cake frosting, sugar substitutes, pizza, salad dressing, and GUILT FREE CARB AWARE for Frozen confections and frozen dairy. Opposer's predecessor and its licensees may have used the GUILT FREE mark on additional goods and services. 6. Opposer’s GUILT FREE mark for food is associated with a single source. Yarnell v Rip Van Wafels • Sn 88-202,127 • Indulge Without The Guilt • Opposition Notice Page 2 7. Opposer’s GUILT FREE mark for food is distinctive. 8. About February 2012 the assets of Opposer's predecessor Yarnell Ice Cream, Inc. were purchased from Yarnell's bankruptcy estate by an affiliate of Schulze and Burch Biscuit Company (S&B). Included in the purchased assets were trademarks, trademark registrations, goodwill, and manufacturing facilities. 9. Opposer Yarnell Ice Cream, LLC and Schulze and Burch Biscuit Company received extensive publicity for S&B's rescue of Yarnell Ice Cream brand and products. 10. S&B, and its predecessors, have manufactured, marketed, and sold various bakery goods since about 1923. 11. In addition to marketing food products under its own brands, S&B manufactures and packages food products for other companies. 12. Applicant has applied to register INDUGE WITHOUT THE GUILT for Class 30, Cookies; Waffles. 13. Cookies and Waffles are common snacks (Exhibit 6-7). 14. Ice cream is also considered a snack (Exhibit 5, § Types of Snack Foods). 15. Applicant's current and expected future goods are thin, sweet wafers, different in appearance, taste and ingredients from conventional American waffles (Exhibits 8, 10). 16. Applicant emphasizes "guilt" in its packaging (Exhibit 9). Yarnell v Rip Van Wafels • Sn 88-202,127 • Indulge Without The Guilt • Opposition Notice Page 3 17. Applicant’s WITHOUT THE GUILT has the identical meaning as Registrant’s GUILT FREE. 18. Applicant’s mark includes the whole meaning of Opposer’s mark, GUILT FREE. 19. Opposer has priority over applicant. 20. Applicant’s INDULGE WITHOUT THE GUILT mark is confusingly similar to Opposer’s GUILT FREE mark. 21. Retail prices for frozen confections are often low per serving. 22. Retail prices for frozen confections are often low per package. 23. Retail prices for snack foods are often low per serving. 24. Retail prices for mass-market snack foods are often low per package. 25. Opposer believes and alleges that Applicant's mark, when applied to the goods of Applicant, are likely to cause confusion or mistake or to deceive, and will cause confusion and mistake, and will deceive and mislead the trade and the purchasing and consuming public in general into believing Applicant's goods are the goods and services of Registrant, or Applicant is licensed or controlled by Registrant, or Applicant is a subsidiary of, or in some way related to Registrant, or Registrant’s goods or services are the goods or services of Applicant, or Registrant is licensed or controlled by Applicant, or Registrant is a subsidiary of, or in some way related to Applicant. Yarnell v Rip Van Wafels • Sn 88-202,127 • Indulge Without The Guilt • Opposition Notice Page 4 26. By reason of the foregoing facts, Registrant will be irreparably damaged by the registration of Applicant's confusingly similar mark. 27. Exhibits 1-4 are true and accurate copies of the cited registrations and TESS reports. Exhibits 5-8 and 10 are true and accurate copies of Internet webpages, captured on below dates, Exhibits 5-7 from <en.wikipedia.org/wiki>, Exhibit 8 from location bar source, Exhibit 9 copied from Applicant's application, TSDR, Exhibit 10 captured from footer source. WHEREFORE, Opposer respectfully requests the opposition to the registration be sustained and registration refused. 26 July 2019 Respectfully submitted, /Daniel Kegan/ Daniel Kegan Jay Giusti KEGAN & KEGAN, LTD. 79 W Monroe St. #1310 Chicago, IL 60603-4931 312-782-6495 <[email protected]> Attorneys for Opposer EXHIBITS 1. GUILT FREE, Trademark Registration 2,120,649 9 Dec 1997 2. GUILT FREE, TESS Report ® 2,120,649 25 July 2019 3. GUILT FREE, Trademark Registration 2,316,804 8 Feb 2000 4. GUILT FREE, TESS Report ® 2,316,804 25 July 2019 5. “Snack,” Wikipedia 22 July 2019 6. “Cookie, Wikipedia 22 July 2019 7. "Waffle", Wikipedia 22 July 2019 8. Applicant's Home Page, Chewy Filling & Thin Wafer 17 Apr 2019 9. Applicant's Package back, multiple "guilt"s 21 Nov 2018 10. Applicant's wafer snack 23 July 2019 Yarnell v Rip Van Wafels • Sn 88-202,127 • Indulge Without The Guilt • Opposition Notice Page 5 Exhibit 1 Yarnell v Rip Van Wafels • Sn 88-202,127 • Indulge Without The Guilt • Opposition • Exhibits Exhibit 2 Yarnell v Rip Van Wafels • Sn 88-202,127 • Indulge Without The Guilt • Opposition • Exhibits Trademar4 Electronic Search System (.ESSA 7/25/19, 3L01 ,- United States Patent and Trademark Office Home|Site Index|Search|FAQ|Glossary|Guides|Contacts|eBusiness|eBiz alerts|News|Help Trademarks > Trademark Electronic Search System (TESS) TESS was last updated on Thu Jul 25 03:31:44 EDT 2019 Logout Please logout when you are done to release system resources allocated for you.