Notice of Opposition

[Pages:18]Trademark Trial and Appeal Board Electronic Filing System.

ESTTA Tracking number: ESTTA1048362

Filing date:

04/10/2020

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

Granted to Date of previous extension

Address

LLC 06/24/2020

941 RIDGE ROAD WEBSTER, NY 14580 UNITED STATES

Correspondence information

NEAL L. SLIFKIN, ESQ. HARRIS BEACH LLP 99 GARNSEY ROAD PITTSFORD, NY 14534 UNITED STATES nslifkin@, trademarks@ 585-419-8636

Applicant Information

Application No

Opposition Filing Date

Applicant

88542291 04/10/2020

Carzoom Auto Leasing LLC 110-26 160th Street Jamaica, NY 11433 UNITED STATES

Publication date

Opposition Period Ends

Goods/Services Affected by Opposition

02/25/2020 06/24/2020

Class 036. First Use: 0 First Use In Commerce: 0 All goods and services in the class are opposed, namely: Auto loan brokerage services; Leasepurchase financing; Automobile lease financing

Class 039. First Use: 0 First Use In Commerce: 0 All goods and services in the class are opposed, namely: Leasing of automobiles; Leasing of cars; Leasing of motor vehicles; Leasing of vehicles; Distribution services, namely,delivery of cars; Distribution services, namely, delivery of suvs

Grounds for Opposition

Priority and likelihood of confusion

Trademark Act Section 2(d)

Mark Cited by Opposer as Basis for Opposition

U.S. Application/ Registra- NONE

Application Date

NONE

tion No. Registration Date Word Mark Goods/Services

NONE

CARZOOM

Website featuring on-line, non-downloadable software enabling users to post a listing to sell cars, search for cars for sale, and purchase cars

Attachments

Signature Name Date

Carzoom - Notice of Opposition 4813-1403-8457 v.pdf(2350362 bytes )

/Neal L. Slifkin/ NEAL L. SLIFKIN, ESQ. 04/10/2020

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

In the matter of trademark application Serial No. 88/542,291

Filed: For the mark:

July 27, 2019 CARZOOM

Published in the Official Gazette on February 25, 2020

LLC,

Opposer,

v.

Opposition No. ___________

CARZOOM AUTO LEASING LLC,

Applicant.

NOTICE OF OPPOSITION

Opposer hereby submits a Notice of Opposition. Please charge the filing fee in the amount of $300.00 to Deposit Account No. 08-0865.

1. Opposer LLC, ("Opposer" or "") is a limited liability company organized and existing under the laws of the State of New York and has its principal place of business at 941 Ridge Road, Webster, NY 14580.

2. Upon information and belief, Applicant Carzoom Auto Leasing LLC ("Applicant" or "Carzoom Auto") is a limited liability company and existing under the laws of the State of New York and has its principal place of business at 110-26 106 Street, Jamaica, NY, 11433.

3. Applicant filed application U.S. Serial No. 88/542,291 on July 27, 2019 for the standard character mark CARZOOM with an description of services: Leasing of automobiles; Leasing of cars; Leasing of motor vehicles; Leasing of vehicles; Distribution services, namely, delivery of cars; Distribution services, namely, delivery of suvs [sic] ("the '291 Application"). The application was filed under Section 1(b) of the Trademark Act on an intent-to-use basis.

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4. The United States Patent and Trademark Office ("USPTO") published the `291 Application for opposition in the Official Gazette on February 25, 2020.

5. On February 28, 2020, Opposer filed a request for a 90 day extension of time to oppose the `291 Application. The Trademark Trial and Appeal Board granted Opposer's extension of time to oppose.

6. Opposer obtained ownership of the domain name ownership on January 3, 2008. Since 2008, Opposer has owned the domain name and website .

7. Beginning in 2008, Opposer used the website to sell cars under the marks CARZOOM and . Attached as Exhibit A is the receipt dated January 3, 2008 showing transfer of ownership of the domain name to Opposer.

8. Opposer has used the CARZOOM and marks to sell cars since well prior to the June 27, 2019 filing date of the '291 Application. Attached as Exhibit B is a screenshot from the Internet Archive dated February 9, 2008 showing the use of the CARZOOM and marks to sell cars.

9. As evidenced by Exhibit B, the CARZOOM portion of the mark is emphasized and is the dominant portion of the mark.

10. On behalf of Opposer, Eric Bauman, a member of Opposer LLC, renewed the domain name on September 16, 2019. Attached as Exhibit C is the renewal receipt for the domain name .

11. Opposer is currently using the domain name, and the CARZOOM and service mark to sell cars. Attached as Exhibit D is a recent screenshot of the website of Opposer.

12. Applicant, in the `291 Application, lists the services of leasing and the delivery of cars.

13. Applicant's services of leasing and the delivery of cars is closely related to Opposer's services of selling cars.

14. Applicant's CARZOOM mark is identical to Opposer's CARZOOM mark and is nearly identical to Opposer's mark.

15. Applicant's mark CARZOOM so resembles Opposer's marks CARZOOM and as to be likely to cause confusion, to cause mistake, and to deceive.

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16. For the foregoing reasons, Opposer believes it will be damaged by registration of Applicant's mark.

WHEREFORE, Opposer prays that application Serial No. 88/542,291 be rejected, that no registration be issued thereon to Applicant, and that this opposition be sustained in favor of Opposer.

Please charge any additional fees associated with this communication or credit any overpayment to deposit Account No. 08-0865. Please direct all notices, pleadings, process, and correspondence concerning this matter to the undersigned.

Date: April 10, 2020

By: /s/ Neal L. Slifkin Neal L. Slifkin, Esq. Attorney for Opposer HARRIS BEACH PLLC 99 Garnsey Road Pittsford, NY 14534 Telephone: (585) 419-8800 Facsimile: (585) 419-8801

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CERTIFICATE OF MAILING On April 10, 2020, I served a true and complete copy of the foregoing NOTICE OF OPPOSITION on the persons listed below by mailing said copy via first class certified mail, return receipt requested, postage prepaid, to:

Mr. Charles Moronta 110-26 106 Street. Jamaica, NY, 11433

/s/ Neal L. Slifkin Neal L. Slifkin

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EXHIBIT A

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