ESTTA Tracking number: ESTTA1435200
`Filing date: 05/13/2025
`
`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
`
`The Toro Company
`
`Granted to date
`of previous ex-
`tension
`
`07/09/2025
`
`Address
`
`8111 LYNDALE AVENUE SOUTH
`BLOOMINGTON, MN 55420
`UNITED STATES
`
`Attorney informa-
`tion
`
`SCOTT W. JOHNSTON
`
`MERCHANT & GOULD P.C.
`
`150 SOUTH FIFTH STREET, SUITE 2200
`
`P.O. BOX 2910
`
`MINNEAPOLIS, MN 55402
`
`UNITED STATES
`
`Primary email: dockmpls@merchantgould.com
`
`Secondary email(s): sjohnston@merchantgould.com,
`jolson@merchantgould.com, slindemeier@merchantgould.com
`612-332-5300
`
`Docket no.
`
`06372.0328USTA
`
`Applicant information
`
`Application no. 98166400 Publication date 03/11/2025
`Opposition filing 05/13/2025 Opposition period | 07/09/2025
`date ends
`
`Applicant
`
`Flex-Elektrowerkzeuge GmbH
`BAHNHOFSTRASSE 15
`STEINHEIM/MURR, 71711
`GERMANY
`
`Goods/services affected by opposition
`
`lawnmowers
`
`Class 007. First Use: None First Use In Commerce: None
`
`All goods and services in the class are opposed, namely: Power-operated garden and lawn mainten-
`ance apparatus, namely, lawn mowers, grass/weed trimmers, string trimmers, pruning shears, hedge
`trimmers, lawn edgers, brush cutters, sprayers, power blowers for lawn debris, snow blowers, snow
`throwers, chain saws, harrows, lawn rakers and cultivators; Earth augers; High pressure washers;
`Lawn and garden string trimmer spools; Lawn and garden accessories, namely, replacement blades
`for power tools in the nature of hedge trimmers, pruners, chain saws, brush cutters, grass shears and
`
`Grounds for opposition
`
`| Priority and likelihood of confusion Trademark Act Section 2(d)
`
`
`
`
`
`
`
`
`
`Marks cited by opposer as basis for opposition
`
`U.S. registration 6178289 Application date 02/03/2020
`
`no.
`
`Register Principal
`
`Registration date | 10/20/2020 Foreign priority NONE
`date
`
`Word mark EFLEX
`
`Design mark
`
`EFLEX
`
`Description of
`mark
`
`Goods/services
`
`Class 007. First use: First Use: Feb 1, 2010 First Use In Commerce: Feb 1,
`
`2010
`
`Outdoor power equipment, namely, mowers for use on golf greens, tennis
`courts, bowling greens and athletic turf, namely, high precision turf mowers; and
`
`attachments for all of the foregoing
`
`U.S. registration 3976077 Application date 11/09/2010
`
`no.
`
`Register Principal
`
`Registration date | 06/07/2011 Foreign priority NONE
`date
`
`Word mark TRIFLEX
`
`Design mark
`
`TRIFLEX
`
`Description of
`mark
`
`Goods/services
`
`Class 007. First use: First Use: Feb 10, 2011 First Use In Commerce: Feb 10,
`
`2011
`
`Commercial mowers intended for use on golf greens
`
`U.S. registration 4391213 Application date 11/30/2012
`no.
`
`Register Principal
`
`Registration date | 08/27/2013 Foreign priority NONE
`
`date
`
`Word mark
`
`SUPER BLUE FLEX
`
`
`
`
`
`
`
`
`
`Design mark
`
`SUPER BLUE FLEX
`
`Description of
`mark
`
`Goods/services
`
`Class 017. First use: First Use: Jan 1990 First Use In Commerce: Jan 1990
`
`Irrigation equipment and components, namely, flexible non-metal hoses and
`pipes, flexible tubes of plastic, and fittings therefor, namely, non-metal couplings
`for use with irrigation hoses, t-shaped non-metal couplings for use with irrigation
`hoses, and non-metal couplings in the nature of swing joints for use with irriga-
`tion hoses
`
`U.S. application 97584982 Application date 09/09/2022
`
`no.
`
`Registration date }| NONE Foreign priority NONE
`date
`
`Word mark FLEX
`
`Design mark
`
`FLEX
`
`Description of
`mark
`
`Goods/services
`
`Class 007. First use: First Use: Feb 28, 2020 First Use In Commerce: Feb 28,
`2020
`
`Turf care equipment, namely lawn mowers for use on golf greens, tennis courts,
`bowling greens and athletic turf
`
`U.S. registration 5434743 Application date 05/16/2017
`
`no.
`
`Register Principal
`
`Registration date | 03/27/2018 Foreign priority NONE
`date
`
`Word mark ISO-FLEX
`
`
`
`
`
`
`
`
`
`Design mark
`
`ISO-FLEX
`
`Description of
`mark
`
`Goods/services
`
`Class 007. First use: First Use: Dec 31, 2017 First Use In Commerce: Dec 31,
`2017
`
`Outdoor power equipment, namely, handles for lawn mowers
`
`U.S. application 98319815 Application date 12/18/2023
`
`no.
`
`Registration date }| NONE Foreign priority NONE
`date
`
`Word mark
`
`FLEX-FORCE POWER SYSTEM
`
`Design mark
`
`FLEX-FORCE POWER SYSTEM
`
`Description of
`mark
`
`Goods/services
`
`Class 009. First use: First Use: Apr 30, 2019 First Use In Commerce: Apr 30,
`2019
`
`Batteries; electric batteries, rechargeable batteries, battery chargers; docking
`stations for recharging outdoor power equipment; charging stations for providing
`electrical energy; all for mowers and turf care equipment
`
`U.S. registration 6142750 Application date 02/11/2019
`
`no.
`
`Register Principal
`
`Registration date | 09/01/2020 Foreign priority NONE
`date
`
`Word mark ETRIFLEX
`
`Design mark
`
`ETRIFLEX
`
`Description of
`
`
`
`
`
`
`
`
`
`mark
`
`Goods/services
`
`Class 007. First use: First Use: Feb 2019 First Use In Commerce: Feb 2019
`Outdoor power equipment, namely, mowers for use on golf greens, tennis
`courts, bowling greens, and athletic turf; riding greens mowers; high-precision
`turf mowers; and attachments for all of the foregoing
`
`U.S. registration 6772142 Application date 06/09/2021
`
`no.
`
`Register Principal
`
`Registration date | 06/28/2022 Foreign priority NONE
`date
`
`Word mark FLEX GOLD
`
`Design mark
`
`FLEX GOLD
`
`Description of
`mark
`
`Goods/services
`
`Class 011. First use: First Use: Dec 31, 2011 First Use In Commerce: Dec 31,
`2011
`
`Outdoor and exterior landscape lighting fixtures, lamps and integrated accessor-
`ies in the nature of lighting fixtures and lighting modules for lighting systems
`comprised primarily of LED lights and also including power supplies, LED
`drivers, and beam controls for the purpose of outdoor lighting applications and
`architectural accent lighting for use in lighting landscape features, walkways,
`pathways, retaining walls, pool decks, and steps; lights and parts therefore,
`namely, architectural and landscape lighting fixtures and lamps; decorative lights
`in the nature of LED light strips for decorative purposes, floodlights and security
`lights
`
`U.S. registration 5944756 Application date 11/21/2017
`
`no.
`
`Register Principal
`
`Registration date | 12/24/2019 Foreign priority NONE
`date
`
`Word mark
`
`FLEX-FORCE POWER SYSTEM
`
`Design mark
`
`FLEX-FORCE POWER SYSTEM
`
`Description of
`mark
`
`Goods/services
`
`Class 007. First use: First Use: Apr 30, 2019 First Use In Commerce: Apr 30,
`2019
`
`Outdoor power equipment, namely, lawn mowers, snow blowers, blowers for
`leaves and debris, grass trimmers and structural parts and components for all of
`the foregoing
`
`
`
`
`
`
`
`
`
`Attachments
`
`88782765#TMSN.png
`85172191#TMSN.png
`85791900#TMSN.png
`97584982#TMSN.png
`87452022#TMSN.png
`98319815#TMSN.png
`88296857#TMSN.png( bytes
`90764028#TMSN.png( bytes
`87692790#TMSN.png( bytes
`2025 05 13 Notice of Opposition 98166400 FLEX without exhibits.pdf(1483853
`bytes )
`2025 05 13 Ex A to Notice of Opposition.pdf(190038 bytes )
`2025 05 13 Ex B to Notice of Opposition.pdf(108382 bytes )
`2025 05 13 Ex C to Notice of Opposition.pdf(6026317 bytes )
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`nano one one
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`2025 05 13 Ex D to Notice of Opposition.pdf(2562771 bytes )
`2025 05 13 Ex E to Notice of Opposition.pdf(568481 bytes )
`2025 05 13 Ex F to Notice of Opposition.pdf(3382344 bytes )
`2025 05 13 Ex G to Notice of Opposition.pdf(646142 bytes )
`2025 05 13 Ex H to Notice of Opposition.pdf(702977 bytes )
`
`Signature /SWJ/
`Name Scott W Johnston
`Date 05/13/2025
`
`
`
`
`
`
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`The Toro Company, Opposition No.
`Opposer, Mark: FLEX
`Vv. Serial No. 98/166,400
`
`Flex-Elektrowerkzeuge GmbH, Filing Date: September 6, 2023
`
`Applicant. Publication Date: March 11, 2025
`
`eee eae SS
`
`NOTICE OF OPPOSITION
`
`1. The Toro Company (“Opposer’’), a Delaware corporation with an address of
`8111 Lyndale Avenue South, Bloomington, Minnesota 55420, believes it will be damaged by
`the registration of the mark shown in application Serial No. 98/166,400 filed September 6,
`2023, by Flex-Elektrowerkzeuge GmbH (“Applicant”), a German Gesellschaft mit beschrankter
`Haftung (GmbH) with an address of Bahnhofstrasse 15 Steinheim/Murr Germany 71711, and
`hereby opposes registration of the mark. The grounds for opposition are detailed below.
`
`2. Applicant’s Mark in application Serial No. 98/166,400 published for opposition on
`March 11, 2025. Opposer filed and the Board approved an extension of time to oppose Applicant’s
`Mark until May 10, 2025. This Notice of Opposition is timely filed.
`
`3. Applicant is seeking to register the mark FLEX for the following goods in
`International Class 7:
`
`Power-operated garden and lawn maintenance apparatus, namely, lawn mowers,
`
`grass/weed trimmers, string trimmers, pruning shears, hedge trimmers, lawn
`
`edgers, brush cutters, sprayers, power blowers for lawn debris, snow blowers,
`
`snow throwers, chain saws, harrows, lawn rakers and cultivators; Earth augers;
`
`High pressure washers; Lawn and garden string trimmer spools; Lawn and garden
`
`accessories, namely, replacement blades for power tools in the nature of hedge
`trimmers, pruners, chain saws, brush cutters, grass shears and lawnmowers
`
`
`
`
`
`
`
`
`4. Opposer is a leading global designer, manufacturer, and seller of a wide range of
`gas- and battery-powered equipment for the outdoor environment, including lawn mowers, yard
`tools, garden equipment and tools, snow blowers, irrigation systems, and related products and
`accessories.
`
`5. Opposer offers a comprehensive range of garden and lawn tools designed to meet
`various outdoor and lawn/yard maintenance needs. Some of Opposer’s products include lawn
`mowers, trimmers, leaf blowers, chainsaws, edgers, cutters, rakes, and seeders.
`
`6. Opposer is the owner of numerous trademark registrations for its FLEX-
`
`formative Marks, including the following:
`
`Mark/Name Status/Key Dates Full Goods/Services Owner Information
`
`TRIFLEX Renewed, September 1, 2021 Int'l Class: 07 The Toro Company
`Office Status: Registered and (Int'l Class: 07) (Delaware Corporation)
`
`RN: 3976077 Renewed Commercial mowers intended 8111 Lyndale Avenue
`
`SN: 85172191
`
`Int'l Class: 07
`
`First Use: February 10, 2011
`Filed: November 9, 2010
`Registered: June 7, 2011
`
`Last Renewal: June 7, 2021
`Register Type: Principal Register
`
`for use on golf greens
`
`South, Bloomington,
`Minnesota 55420
`United States of
`America
`
`SUPER BLUE
`FLEX
`
`RN: 4391213
`SN: 85791900
`
`Renewed, March 23, 2023
`
`Office Status: Registered and
`Renewed
`
`Int'l Class: 17
`
`First Use: January, 1990
`
`Filed: November 30, 2012
`Registered: August 27, 2013
`Last Renewal: August 27, 2023
`Register Type: Principal Register
`
`Int'l Class: 17
`
`(Int'l Class: 17)
`
`Irrigation equipment and
`components, namely, flexible
`non-metal hoses and pipes,
`flexible tubes of plastic, and
`fittings therefor, namely, non-
`metal couplings for use with
`irrigation hoses, t-shaped non-
`metal couplings for use with
`irrigation hoses, and non-metal
`couplings in the nature of swing
`joints for use with irrigation
`hoses
`
`The Toro Company
`(Delaware Corporation)
`8111 Lyndale Avenue
`South, Bloomington,
`Minnesota 55420
`United States of
`America
`
`ISO-FLEX
`
`RN: 5434743
`SN: 87452022
`
`Registered, October 3, 2023
`Office Status: Section 8 & 15-
`Accepted and Acknowledged
`Int'l Class: 07
`
`First Use: December 31, 2017
`Filed: May 16, 2017
`
`Registered: March 27, 2018
`Register Type: Principal Register
`
`Int'l Class: 07
`
`(Int'l Class: 07)
`
`Outdoor power equipment,
`namely, handles for lawn
`mowers
`
`The Toro Company
`(Delaware Corporation)
`Legal Department 8111
`Lyndale Avenue S.,
`Bloomington,
`Minnesota 554201196
`United States of
`America
`
`
`
`
`
`
`
`
`
`Mark/Name
`
`Status/Key Dates
`
`Full Goods/Services
`
`Owner Information
`
`FLEX-FORCE
`POWER
`SYSTEM
`
`RN: 5944756
`SN: 87692790
`
`Registered, December 27, 2024
`Office Status: Cancellation
`Pending
`
`Int'l Class: 07
`
`First Use: April 30, 2019
`
`Filed: November 21, 2017
`Registered: December 24, 2019
`Register Type: Principal Register
`
`Int'l Class: 07
`
`(Int'l Class: 07)
`
`Outdoor power equipment,
`namely, lawn mowers, snow
`blowers, blowers for leaves and
`debris, grass trimmers and
`structural parts and components
`for all of the foregoing
`
`The Toro Company
`(Delaware Corporation)
`8111 Lyndale Avenue
`South, Bloomington,
`Minnesota 55420
`United States of
`America
`
`ETRIFLEX
`
`RN: 6142750
`SN: 88296857
`
`Registered, September 1, 2020
`Office Status: Registered
`
`Int'l Class: 07
`
`First Use: February, 2019
`
`Filed: February 11, 2019
`Registered: September 1, 2020
`Register Type: Principal Register
`
`Int'l Class: 07
`
`(Int'l Class: 07)
`
`Outdoor power equipment,
`namely, mowers for use on golf
`greens, tennis courts, bowling
`greens, and athletic turf; riding
`greens mowers; high-precision
`turf mowers; and attachments
`for all of the foregoing
`
`The Toro Company
`(Delaware Corporation)
`8111 Lyndale Avenue
`South, Bloomington,
`Minnesota 55420
`United States of
`America
`
`EFLEX
`
`RN: 6178289
`SN: 88782765
`
`Registered, October 20, 2020
`Office Status: Registered
`
`Int'l Class: 07
`
`First Use: February 1, 2010
`Filed: February 3, 2020
`Registered: October 20, 2020
`Register Type: Principal Register
`
`Int'l Class: 07
`
`(Int'l Class: 07)
`
`Outdoor power equipment,
`namely, mowers for use on golf
`greens, tennis courts, bowling
`greens and athletic turf, namely,
`high precision turf mowers; and
`attachments for all of the
`foregoing
`
`The Toro Company
`(Delaware Corporation)
`8111 Lyndale Avenue
`South Legal
`Department,
`Bloomington,
`Minnesota 55420
`United States of
`America
`
`FLEX GOLD
`
`RN: 6772142
`SN: 90764028
`
`Registered, June 28, 2022
`
`Office Status: Registered
`
`Int'l Class: 11
`
`First Use: December 31, 2011
`Filed: June 9, 2021
`
`Registered: June 28, 2022
`Register Type: Principal Register
`
`Int'l Class: 11
`
`(Int'l Class: 11)
`
`Outdoor and exterior landscape
`lighting fixtures, lamps and
`integrated accessories in the
`nature of lighting fixtures and
`lighting modules for lighting
`systems comprised primarily of
`LED lights and also including
`power supplies, LED drivers,
`and beam controls for the
`purpose of outdoor lighting
`applications and architectural
`accent lighting for use in
`lighting landscape features,
`walkways, pathways, retaining
`walls, pool decks, and steps;
`lights and parts therefore,
`namely, architectural and
`landscape lighting fixtures and
`lamps; decorative lights in the
`nature of LED light strips for
`decorative purposes, floodlights
`and security lights
`
`The Toro Company
`(Delaware Corporation)
`8111 Lyndale Avenue
`South, Bloomington,
`Minnesota 55420
`United States of
`America
`
`
`
`
`
`
`
`
`
`Current printouts of information from the electronic database records of the USPTO showing
`the current status and title of the registrations in the above table are attached hereto as
`Exhibit A.
`
`7. Opposer is the also the owner of two pending trademark applications for the
`
`FLEX and FLEX-FORCE POWER SYSTEM marks, as shown in the below chart:
`
`FLEX Published, August 12, 2024 Int'l Class: 07 The Toro Company
`Office Status: Opposition Pending | (Int'l Class: 07) (Delaware Corporation)
`SN: 97584982 Int'l Class: 07 Turf care equipment, namely 8111 Lyndale Avenue
`First Use: February 28, 2020 lawn mowers for use on golf South, Bloomington,
`Filed: September 9, 2022 greens, tennis courts, bowling Minnesota 55420
`Register Type: Principal Register | greens and athletic turf United States of
`America
`FLEX-FORCE | Published, February 18, 2025 Int'l Class: 09 The Toro Company
`POWER Office Status: Opposition Pending | (Int'l Class: 09) (Delaware Corporation)
`SYSTEM Int'l Class: 09 Batteries; electric batteries, 8111 Lyndale Avenue
`First Use: April 30, 2019 rechargeable batteries, battery South, Bloomington,
`SN: 98319815 Filed: December 18, 2023 chargers; docking stations for Minnesota 55420
`Register Type: Principal Register | recharging outdoor power United States of
`equipment; charging stations America
`for providing electrical energy;
`all for mowers and turf care
`equipment
`
`Current printouts of information from the electronic database records of the USPTO showing
`the current status and title of the applications in the above table are attached hereto as
`Exhibit B.
`
`8. Opposer’s U.S. Registration Nos. 5,434,743, 4,391,213, and 3,976,077 are
`incontestable under Section 15 of the Lanham Act, 15 U.S.C. § 1065. Consequently, these
`registrations are conclusive evidence of the validity of the registered marks and of the
`registration of the marks, of Opposer’s ownership of the marks, and of Opposer’s exclusive
`right to use the registered marks in commerce under Section 33 of the Lanham Act, 15 U.S.C.
`
`§ 1115.
`
`
`
`
`
`
`
`
`
`9. For decades, Opposer has used and/or registered trademarks containing the word
`“FLEX” in association with a wide variety of garden and lawn maintenance tools (“Opposer’s
`FLEX and FLEX-formative Marks”).
`
`10. Opposer has used FLEX and FLEX-formative Marks in the United States for
`decades. It launched its TRIFLEX cutting unit for Opposer’s GROUNDSMASTER product in
`1988. See Exhibit C. Opposer commenced use of the FLEX mark on greens mowers in 2000.
`See Exhibit D.
`
`11. For years, Opposer has used its FLEX and FLEX-formative Marks on a variety
`of lawn and garden maintenance tools and equipment, including FLEX, TRIFLEX, EFLEX,
`FLEX-FORCE POWER SYSTEM, and other marks.
`
`12. Today, Opposer uses its FLEX and FLEX-formative Marks in connection with a
`variety of lawn and garden maintenance tools and equipment, including lawn mowers, blowers,
`snow blowers, trimmers, chainsaws, and many additional products. Some examples of
`
`Opposer’s uses of the FLEX and FLEX-formative marks are shown below and in Exhibits E-H.
`
`
`
`
`
`
`
`
`
`The Flex-Force Power System®
`Products
`
`Interchangeable Battery. Unbeatable Tools.
`
`60V MAX* 22 in. (56 cm)
`Recycler® Personal Pace®
`Auto-Drive
`
`with Flex-Force Power System =
`
`60V MAX* 21 in. (53 cm)
`Stripe® Dual-Blades Self-
`Propelled Mower - 7.5Ah
`
`Battery/Charger Included
`
`| Striping with Flex-Force
`
`60V Max* 21 in. (53 cm)
`Recycler® Self-Propel
`w/SmartStow® Lawn
`Mower with 6.0Ah Battery
`
`With Flex-Force Power System ®
`Power System " a
`
`$599.00 USD pene Cae or
`+ $499.00 USD
`
`60V Max* 22 in. (56cm)
`
`Recycler® w/ Personal
`
`Pace® & SmartStow® Lawn Mower - 5.0Ah
`
`Mower with 8.0Ah Battery Battery/Charger Included
`
`With Flex-Force Power System ® Pro-Lewel Striping with Flex-Foree
`sak sniia Power System =
`
`60V MAX* 21 in. (53 cm)
`Stripe® Self-Prop
`
`60V MAX* 30 in. (76 cm)
`eTi Personal
`Pace@ Auto-Drive Lawn
`Mower - (2) 10.0Ah
`Batteries/Chargers Included
`
`with Flex-Force Power System =
`
`$629.00 USD
`
`$504.00 USD $2,199.00 USD
`
`Greensmaster® Flex™ 1018/1021 Series
`
`SEE ALL PRODUCT OPTIONS BELOW
`
`Toro’s line of flex-head walk-behind greensmowers have been engineered to bring each
`operator and greensmower into perfect harmony with one another. Multiple innovations —
`starting with an industry-first telescoping handle — come together to deliver unparalleled
`cut quality and consistent playability on each and every green. The modular design also
`makes the Greensmaster Flex Series mowers easier than ever to maintain, saving
`significant time and money and lowering the total cost of ownership.
`
`Choose from 2 models, the Greensmaster Flex 1018 or 1021 with cutting widths of 18”
`and 21”. Detachable cutting unit options with 11 or 14 blade EdgeSeries™ reels are
`readily available to manicure your turf the way you prefer.
`
`Models:
`* Greensmaster® Flex 1018
`* Greensmaster® Flex 1021
`
`Related Models:
`° Greensmaster®
`
`
`
`
`
`
`
`
`
`Greensmaster® TriFlex™ Series
`
`SEE ALL PRODUCT OPTIONS BELOW
`
`The Greensmaster® TriFlex™ Mowers were designed to take pri
`greens mower to a completely new level. Adopting the proven F
`cutting units float freely over contours and undulations of the gi
`superior quality of cut and aftercut appearance. Improved servi
`advantage of the TriFlex™ models. The tool-free, quick-change
`servicing the cutting units fast and easy and a lift-gate footrest
`the center cutting unit.
`
`Optional all-electric reel drive eliminates hydraulic leak points a
`horsepower to handle a broad range of cutting applications.
`
`Configuration Options:
`
`* Greensmaster 3300 Gas Powered with Hydraulic Reels
`
`* Greensmaster 3320 Gas Powered with Electric Reels
`
`* Greensmaster 3400 Diesel Powered with Hydraulic Reels
`¢ Greensmaster 3420 Diesel Powered with Electric Reels
`
`13. Opposer has advertised and promoted its FLEX and FLEX-formative Marks
`continuously and extensively and has made substantial sales of products and services under said
`marks. As a result of such continuous use and promotion, Opposer’s FLEX and FLEX-
`formative Marks for its lawn mowers and various lawn and garden maintenance tools have
`developed and represent valuable goodwill inuring to the benefit of Opposer.
`
`14. There is no issue of priority concerning application Serial No. 98/166,400 since
`Opposer used FLEX in various forms for decades, use of which is well prior to Applicant’s
`September 6, 2023, filing date, and because Opposer owns valid registrations for its FLEX-
`formative Marks in the lawn and garden maintenance tool space. Opposer therefore has priority
`over Applicant with respect to the marks and goods at issue.
`
`15. Upon information and belief, Applicant had knowledge of the fact that Opposer
`used its FLEX and FLEX-formative Marks as trademarks before it adopted its mark.
`
`16. Applicant’s FLEX mark is confusingly and deceptively similar to Opposer’s
`
`previously used FLEX and duly registered FLEX-formative Marks.
`
`
`
`
`
`
`
`
`17. Applicant’s FLEX mark is identical or substantially similar in sight, sound and
`commercial impression to Opposer’s FLEX and FLEX-formative Marks.
`
`18. Applicant’s goods are virtually identical to, and highly competitive with,
`Opposer’s goods marketed and sold by Opposer in connection with Opposer’s FLEX and
`FLEX-formative Marks, namely power-operated garden and lawn maintenance apparatuses,
`including but not limited to lawn mowers, grass/weed trimmers, hedge trimmers, lawn edgers,
`brush cutters, power blowers, and chainsaws.
`
`19. Opposer’s goods and Applicant’s goods travel in the same channels of trade are
`promoted to the same consumers or class of consumers.
`
`20. Due to the similarity between Applicant’s claimed mark, FLEX, and Opposer’s
`FLEX and FLEX-formative Marks, the closely related nature of the products of the respective
`parties, customers and potential customers are likely to believe that Applicant’s goods originate
`from Opposer, resulting in a likelihood of confusion in the marketplace, and damage to
`Opposer.
`
`21. The use and registration by Applicant of the mark FLEX for Applicant’s goods
`identified in U.S. Serial No. 98/166,400 is likely to cause confusion or to cause mistake or
`deception in the trade, and among purchasers and potential purchasers, with Opposer’s FLEX
`and FLEX-formative Marks, again resulting in damage to Opposer.
`
`22. Because of the closely related nature of the respective goods of the parties, and
`the similarity of the marks, use and registration of the term FLEX by Applicant is likely to
`cause confusion, mistake, or deception that Applicant’s goods are those of Opposer, or are
`otherwise endorsed, sponsored, or approved by Opposer for use with Opposer’s goods causing
`
`further damage to Opposer.
`
`
`
`
`
`
`
`
`23. Registration of the mark shown in U.S. Serial No. 98/166,400 will result in
`damage to Opposer under the provisions of Section 2 of the U.S. Trademark Act, 15 U.S.C.
`Section 1052, pursuant to the allegations stated above.
`
`WHEREFORE, Opposer asks that its opposition to this application be sustained and that
`registration of the term FLEX for the goods set forth therein be refused.
`
`Please direct all correspondence to:
`Scott W. Johnston
`John P. Olson
`MERCHANT & GOULD P.C.
`P.O. Box 2910
`150 South Fifth Street, Suite 2200
`Minneapolis, MN 55402
`sjohnston@merchantgould.com
`jolson@merchantgould.com
`slindemeier@merchantgould.com
`dockmpls@merchantgould.com
`
`Opposer herein appoints Scott W. Johnston, Reg. No. 39,721; Gregory C. Golla;
`
`Andrew S. Ehard; Danielle I. Mattessich; Christopher J. Schulte; William D. Schultz; Lindsay
`
`Jones; and all other attorneys of the firm of Merchant & Gould P.C., its attorneys to transact all
`
`business in the U.S. Patent and Trademark Office relating to this matter with full power of
`
`substitution.
`Respectfully submitted,
`THE TORO COMPANY
`By its Attorneys,
`
`Date: May 13, 2025 /Scott W. Johnston/
`
`Scott W. Johnston
`
`John P. Olson
`
`MERCHANT & GOULD P.C.
`
`150 South Fifth Street, Suite 2200
`Minneapolis, Minnesota 55402-4247
`(612) 332-5300
`
`9
`
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a true and correct copy of the foregoing NOTICE OF OPPOSITION
`was served upon the following attorney of record for Applicant by email this 13" day of May,
`
`2025:
`
`Jeffrey P. Dunning
`
`Greenberg Traurig, LLP
`
`77 W. Wacker Drive, Suite 3100
`
`Chicago, Illinois 60601
`
`Email: chiipmail@gtlaw.com; dunningj@gtlaw.com; cronink@gtlaw.com;
`matthewsk@gtlaw.com
`
`/Scott W. Johnston/
`Scott W. Johnston
`
`10
`
`
`
`
`
`
`
`
`EXHIBIT A
`
`
`
`
`
`
`
`
`Generated on:
`
`This page was generated by TSDR on 2025-05-12 11:27:24 EDT
`
`Mark: TRIFLEX
`US Serial Number: 85172191 Application Filing Nov. 09, 2010
`Date:
`US Registration 3976077 Registration Date: Jun. 07, 2011
`Number:
`Register: Principal
`Mark Type: Trademark
`TM5 Common Status LIVE/REGISTRATION/Issued and Active
`Descriptor:
`The trademark application has been registered with the Office.
`Status: The registration has been renewed.
`
`Status Date:
`
`Sep. 01, 2021
`
`Publication Date:Feb. 15, 2011Notice of Allowance Date:Apr. 12, 2011
`
`Mark Information
`
`Mark Literal
`Elements:
`
`TRIFLEX
`
`Standard Character Yes. The mark consists of standard characters without claim to any particular font style, size, or color.
`
`Claim:
`
`Mark Drawing
`Type:
`
`4 - STANDARD CHARACTER MARK
`
`Goods and Services
`
`Note:
`
`The following symbols indicate that the registrant/owner has amended the goods/services:
`e Brackets [..] indicate deleted goods/services;
`e Double parenthesis ((..)) identify any goods/services not claimed in a Section 15 affidavit of incontestability; and
`e Asterisks *..* identify additional (new) wording in the goods/services.
`
`For: Commercial mowers intended for use on golf greens
`International 007 - Primary Class U.S Class(es): 013, 019, 021, 023, 031, 034, 035
`Class(es):
`Class Status: ACTIVE
`First Use: Feb. 10, 2011 Use in Commerce: Feb. 10, 2011
`Basis Information (Case Level)
`Filed Use: No Currently Use: Yes
`Filed ITU: Yes Currently ITU: No
`Filed 44D: No Currently 44D: No
`Filed 44E: No Currently 44E: No
`Filed 66A: No Currently 66A: No
`Filed No Basis: No Currently No Basis: No
`Current Owner(s) Information
`Owner Name: The Toro Company
`
`Owner Address:
`
`8111 Lyndale Avenue South
`Bloomington, MINNESOTA UNITED STATES 55420
`
`
`
`
`
`
`
`
`Legal Entity Type: CORPORATION State or Country DELAWARE
`
`Where Organized:
`
`Attorney/Correspondence Information
`
`Attorney of Record
`
`Attorney Name: Linda M. Byrne Docket Number: 808TM
`Attorney Primary trademark.uspto@toro.com Attorney Email Yes
`Email Address: Authorized:
`Correspondent
`
`Correspondent Linda M. Byrne
`Name/Address: The Toro Company
`
`8111 Lyndale Avenue South
`Legal Department
`Bloomington, MINNESOTA UNITED STATES 55420
`
`Correspondent e- trademark.uspto@toro.com Correspondent e- Yes
`
`mail: mail Authorized:
`
`Domestic Representative - Not Found
`
`Prosecution History
`
`Date
`
`Sep. 01, 2021
`Sep. 01, 2021
`Sep. 01, 2021
`Sep. 01, 2021
`May 06, 2021
`Jun. 07, 2020
`Dec. 15, 2016
`Dec. 15, 2016
`Dec. 13, 2016
`Oct. 04, 2016
`Jun. 07, 2016
`Oct. 16, 2015
`Oct. 16, 2015
`Jun. 07, 2011
`May 05, 2011
`May 04, 2011
`May 03, 2011
`Apr. 20, 2011
`Apr. 15, 2011
`Apr. 19, 2011
`Apr. 15, 2011
`Apr. 12, 2011
`Feb. 15, 2011
`Jan. 26, 2011
`Jan. 07, 2011
`Jan. 07, 2011
`Dec. 12, 2010
`Dec. 12, 2010
`Nov. 15, 2010
`Nov. 12, 2010
`
`Description
`
`NOTICE OF ACCEPTANCE OF SEC. 8 & 9 - E-MAILED
`REGISTERED AND RENEWED (FIRST RENEWAL - 10 YRS)
`REGISTERED - SEC. 8 (10-YR) ACCEPTED/SEC. 9 GRANTED
`CASE ASSIGNED TO POST REGISTRATION PARALEGAL
`TEAS SECTION 8 & 9 RECEIVED
`
`COURTESY REMINDER - SEC. 8 (10-YR)/SEC. 9 E-MAILED
`NOTICE OF ACCEPTANCE OF SEC. 8 & 15 - E-MAILED
`REGISTERED - SEC. 8 (6-YR) ACCEPTED & SEC. 15 ACK.
`CASE ASSIGNED TO POST REGISTRATION PARALEGAL
`TEAS SECTION 8 & 15 RECEIVED
`
`COURTESY REMINDER - SEC. 8 (6-YR) E-MAILED
`ATTORNEY/DOM.REP.REVOKED AND/OR APPOINTED
`TEAS REVOKE/APP/CHANGE ADDR OF ATTY/DOM REP RECEIVED
`REGISTERED-PRINCIPAL REGISTER
`
`NOTICE OF ACCEPTANCE OF STATEMENT OF USE MAILED
`LAW OFFICE REGISTRATION REVIEW COMPLETED
`ALLOWED PRINCIPAL REGISTER - SOU ACCEPTED
`STATEMENT OF USE PROCESSING COMPLETE
`
`USE AMENDMENT FILED
`
`CASE ASSIGNED TO INTENT TO USE PARALEGAL
`
`TEAS STATEMENT OF USE RECEIVED
`
`NOA MAILED - SOU REQUIRED FROM APPLICANT
`PUBLISHED FOR OPPOSITION
`
`NOTICE OF PUBLICATION
`
`LAW OFFICE PUBLICATION REVIEW COMPLETED
`ASSIGNED TO LIE
`
`APPROVED FOR PUB - PRINCIPAL REGISTER
`
`ASSIGNED TO EXAMINER
`
`NEW APPLICATION OFFICE SUPPLIED DATA ENTERED
`NEW APPLICATION ENTERED
`
`Proceeding
`Number
`
`TM Staff and Location Information
`
`TM Staff Information - None
`File Location
`
`Current Location: GENERIC WEB UPDATE Date in Location: Sep. 01, 2021
`
`
`
`
`
`
`
`
`Generated on: This page was generated by TSDR on 2025-05-12 11:26:57 EDT
`Mark: SUPER BLUE FLEX
`
`SUPER BLUE FLEX
`US Serial Number: 85791900 Application Filing Nov. 30, 2012
`Date:
`US Registration 4391213 Registration Date: Aug. 27, 2013
`Number:
`
`Register: Principal
`Mark Type: Trademark
`
`TM5 Common Status LIVE/REGISTRATION/Issued and Active
`Descriptor:
`The trademark application has been registered with the Office.
`
`Status: The registration has been renewed.
`Status Date: Mar. 23, 2023
`Publication Date:Jun. 11, 2013
`
`Mark Information
`
`Mark Literal SUPER BLUE FLEX
`Elements:
`
`Standard Character Yes. The mark consists of standard characters without claim to any particular font style, size, or color.
`Claim:
`
`Mark Drawing 4 - STANDARD CHARACTER MARK
`Type:
`
`Disclaimer: "BLUE"
`
`Related Properties Information
`
`Claimed Ownership 1230982, 2564158, 3136723
`of US
`Registrations:
`
`Goods and Services
`
`Note:
`
`The following symbols indicate that the registrant/owner has amended the goods/services:
`e Brackets [..] indicate deleted goods/services;
`e Double parenthesis ((..)) identify any goods/services not claimed in a Section 15 affidavit of incontestability; and
`e Asterisks *..* identify additional (new) wording in the goods/services.
`
`For: Irrigation equipment and components, namely, flexible non-metal hoses and pipes, flexible tubes of plastic, and fittings therefor,
`namely, non-metal couplings for use with irrigation hoses, t-shaped non-metal couplings for use with irrigation hoses, and non-metal
`couplings in the nature of swing joints for use with irrigation hoses
`
`International 017 - Primary Class U.S Class(es): 001, 005, 012, 013, 035, 050
`Class(es):
`
`Class Status: ACTIVE
`First Use: Jan. 1990 Use in Commerce: Jan. 1990
`
`Basis Information (Case Level)
`
`Filed Use: Yes Currently Use: Yes
`Filed ITU: No Currently ITU: No
`Filed 44D: No Currently 44D: No
`
`Filed 44E: No Currently 44E: No
`
`
`
`
`
`
`
`
`Filed 66A: No Currently 66A: No
`
`Filed No Basis: No Currently No Basis: No
`
`Current Owner(s) Information
`
`Owner Name: The Toro Company
`
`Owner Address: 8111 Lyndale Avenue South
`
`Bloomington, MINNESOTA UNITED STATES 55420
`
`Legal Entity Type: CORPORATION State or Country DELAWARE
`
`Where Organized:
`
`Attorney/Correspondence Information
`
`Attorney of Record
`
`Attorney Name: Linda M. Byrne Docket Number: 895TM
`Attorney Primary trademark.uspto@toro.com Attorney Email Yes
`Email Address: Authorized:
`Correspondent
`
`Correspondent Linda M. Byrne
`Name/Address: The Toro Company
`
`8111 Lyndale Avenue South
`Legal Department
`Bloomington, MINNESOTA UNITED STATES 55420-1196
`
`Correspondent e- trademark.uspto@toro.com Correspondent e- Yes
`
`mail: mail Authorized:
`
`Domestic Representative - Not Found
`
`Prosecution History
`
`Date
`
`Mar. 23, 2023
`Mar. 23, 2023
`Mar. 23, 2023
`Mar. 23, 2023
`Sep. 09, 2022
`Aug. 27, 2022
`Jan. 03, 2019
`Jan. 03, 2019
`Jan. 02, 2019
`Dec. 03, 2018
`Aug. 27, 2018
`Oct. 16, 2015
`Oct. 16, 2015
`Aug. 27, 2013
`Jun. 11, 2013
`May 22, 2013
`May 07, 2013
`May 07, 2013
`Apr. 29, 2013
`Apr. 26, 2013
`Apr. 25, 2013
`Apr. 25, 2013
`Mar. 25, 2013
`Mar. 25, 2013
`Mar. 20, 2013
`Dec. 11, 2012
`Dec. 06, 2012
`
`Description
`
`NOTICE OF ACCEPTANCE OF SEC. 8 & 9 - E-MAILED
`REGISTERED AND RENEWED (FIRST RENEWAL - 10 YRS)
`REGISTERED - SEC. 8 (10-YR) ACCEPTED/SEC. 9 GRANTED
`CASE ASSIGNED TO POST REGISTRATION PARALEGAL
`TEAS SECTION 8 & 9 RECEIVED
`
`COURTESY REMINDER - SEC. 8 (10-YR)/SEC. 9 E-MAILED
`NOTICE OF ACCEPTANCE OF SEC. 8 & 15 - E-MAILED
`REGISTERED - SEC. 8 (6-YR) ACCEPTED & SEC. 15 ACK.
`CASE ASSIGNED TO POST REGISTRATION PARALEGAL
`TEAS SECTION 8 & 15 RECEIVED
`
`COURTESY REMINDER - SEC. 8 (6-YR) E-MAILED
`ATTORNEY/DOM.REP.REVOKED AND/OR APPOINTED
`TEAS REVOKE/APP/CHANGE ADDR OF ATTY/DOM REP RECEIVED
`REGISTERED-PRINCIPAL REGISTER
`
`PUBLISHED FOR