Notice of Opposition

Trademark Trial and Appeal Board Electronic Filing System.

ESTTA Tracking number: ESTTA1007398

Filing date:

10/08/2019

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 Entity Address

The NOCO Company

Corporation

Citizenship

30339 Diamond Parkway, #102 Glenwillow, OH 44139 UNITED STATES

Ohio

Attorney information

Ann K. Ford DLA Piper LLP (US) 500 Eighth Street, NW Washington, DC 20004 UNITED STATES dctrademarks@, ann.ford@, john.nading@, devika.persaud@ 202-799-4000

Applicant Information

Application No

Opposition Filing Date

Applicant

88308553

Publication date

10/08/2019

Opposition Period Ends

Deltona Transformer Corporation 801 International Speedway Blvd. DeLand, FL 32724 UNITED STATES

10/08/2019 11/07/2019

Goods/Services Affected by Opposition

Class 009. First Use: 2018/10/00 First Use In Commerce: 2018/10/00 All goods and services in the class are opposed, namely: Batteries; battery chargers; battery maintainers; battery monitors; battery testers; waterproof battery chargers; trickle battery chargers; renewable battery charger systems consisting primarily of battery charging devices, solar panels, charge controllers and battery cables; solar panels for production of electricity; power supplies for batteries; battery conditioners; battery voltage indicators; portable battery charger systems consisting primarily of battery charging devices, charge controllers and battery cables; portable power supply systems consisting primarily of power supply devices, charge controllers and battery cables; battery jump starters; power supply connectors, battery charging devices and adaptors for use with portable electronic devices; battery cases; battery power connectors and adaptors; battery terminal connector clamps; carrying cases for battery chargers and accessories; digital voltage indicators; extension cables; and battery terminal harnesses

Grounds for Opposition

The mark is generic

Trademark Act Sections 1, 2 and 45

Related Proceed- Cancellation No. 92070474 Cancellation No. 92070950 ings

Attachments

Notice of Opposition - App. No. 88308553 BATTERY TENDER (with exhibits).pdf(2527260 bytes )

Signature Name Date

/Ann K. Ford/ Ann K. Ford 10/08/2019

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

In the Matter of Trademark Application Serial No. 88308553

Mark: Filed: February 20, 2019 Published: October 8, 2019

THE NOCO COMPANY, Opposer,

v. DELTONA TRANSFORMER CORPORATION,

Applicant.

) ) ) ) ) ) Opposition No. ) ) ) ) ) )

NOTICE OF OPPOSITION

Opposer The NOCO Company ("Opposer" or "NOCO") believes that it is and will be

damaged by the registration of United States Trademark Application Serial No. 88308553

("Application"), as filed with the United States Patent and Trademark Office ("USPTO") on

February 20, 2019 by Deltona Transformer Corporation ("Applicant"), for the mark BATTERY

TENDER & Design, depicted here

(the "Mark"), in connection with "batteries;

battery chargers; battery maintainers; battery monitors; battery testers; waterproof battery

chargers; trickle battery chargers; renewable battery charger systems consisting primarily of

battery charging devices, solar panels, charge controllers and battery cables; solar panels for

production of electricity; power supplies for batteries; battery conditioners; battery voltage

indicators; portable battery charger systems consisting primarily of battery charging devices,

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charge controllers and battery cables; portable power supply systems consisting primarily of power supply devices, charge controllers and battery cables; battery jump starters; power supply connectors, battery charging devices and adaptors for use with portable electronic devices; battery cases; battery power connectors and adaptors; battery terminal connector clamps; carrying cases for battery chargers and accessories; digital voltage indicators; extension cables; and battery terminal harnesses" in International Class 9 (collectively, the "Goods"). Attached hereto as Exhibit A and made a part of the record are true and correct copies of the TSDR and TESS print-outs from the USPTO website for the Application. NOCO hereby opposes said Application under the provisions of Section 13 of the Trademark Act of 1946 (hereinafter "Lanham Act"), 15 U.S.C. ? 1063.

As grounds for the Opposition, NOCO alleges the following: 1. NOCO, an Ohio corporation, is a manufacturer and distributor of battery chargers, battery jump starters, battery packs, and other battery related goods and accessories. 2. Opposer and Applicant are competitors that operate in the same industry and sell competitive products, namely battery chargers and related devices. 3. As a competitor of Applicant and seller of similar products as Applicant, Opposer will at times use the words "battery tender" or "tender" in its marketing materials, in Amazon keywords, in keywords for targeted paid advertisements and for product comparisons. 4. In fact, Applicant has accused Opposer of infringing on its rights in its Mark as a result of Opposer's advertising. Opposer has already filed Petitions for Cancellation at the United States Trademark Trial and Appeal Board ("Board") against (1) Applicant's BATTERY TENDER Mark Registration No. 3474591, which was assigned Proceeding No. 92070474; and (2) Applicant's BATTERY TENDER Mark Registration No. 4750963, DELTRAN BATTERY

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TENDER Mark Registration No. 4281421, and

Mark Registration No. 4455454,

which was assigned Proceeding No. 92070950. The Board consolidated these two Cancellation

Proceedings on or around October 4, 2019.

5. Registration of the Mark will hinder and interfere with Opposer's business.

6. As such, registration of the Mark will cause injury and damage to Opposer, and

therefore, Opposer has standing to oppose registration of the Mark.

The History of Applicant's Mark

7. Applicant's Mark has a history of being deemed, at best, merely descriptive for

the Goods. Nearly two decades ago, in Deltona Transformer Corp. v. Wal-Mart Stores, 115 F.

Supp. 2d 1361 (M.D. Fla. 1999), Applicant filed suit against Wal-Mart seeking a preliminary

injunction to prevent Wal-Mart from selling a line of battery chargers that used the term "battery

tender" on its packaging. Applicant lost its request for preliminary injunction because the Court

found "that the `Battery Tender' mark is merely descriptive with no showing of a secondary

meaning and, thus, is not entitled to protection." Id. at 1366-67. The Court further remarked,

"[i]t is beyond doubt that the term `Battery Tender' bears a relationship to the type of product--

battery charger--being offered by Deltran [(Applicant's d/b/a)]." Id. at 1366 n.2. In fact, the

Court went on to state that "the evidence borders on showing that the term is being used

generically to describe the type of product, i.e., a charger that tends batteries." Id. at 1367

(emphasis added).

8. The Mark already includes a disclaimer of the term "battery;" specifically, "no

claim is made to the exclusive right to use `battery' apart from the mark as shown."

9. Indeed, the USPTO issued an Office Action against the Application on May 3,

2019, finding, "[t]hese unregistrable terms [BATTERY TENDER] at best are merely descriptive

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