IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`CLASSMATES ONLINE, lNC., D/B/A
`CLASSMATESCOM,
`
`Opposition No:
`
`E3.
`l
`?,
`C’)
`:32
`,,,., ;
`
`V_
`
`Opposer,
`
`In re Application Serial No. 76/374,996
`
`Filed: February 26, 2002
`Mark: CLASMATE
`
`U‘
`“’
`
`‘-‘
`
`CLAS INFORMATION SERVICES,
`
`Published: September 17, 2002
`
`
`A licant.
`
`W9-19-2002
`
`U.S. Paunra TMOfc/TM Mail Rom, gt "0
`
`NOTICE OF OPPOSITION
`
`Classmates Online, Inc., d/b/a Classmates.com, a Washington Corporation with a
`
`principal place of business at 1100 Oakesdale Avenue S.W., Renton, WA 98055, U.S.A.
`
`(“Opposer”), believes that it will be damaged by registration of the mark shown in the above-
`
`identified application, and hereby opposes the same.
`
`The grounds for opposition are as follows:
`
`1.
`
`Opposer is the applicant/owner of the service marks “CLASSMATESCOM” and
`
`“CLASSMATES,” which have been filed and/or registered with the United States Patent and
`
`Trademark Office (Reg. No. 2,584,325, and Serial Nos. 75/872759 and 76/258,328 for classes
`
`35, 38, 41 and 42), for on-line and database—related services, including the following: providing
`
`an on-line computer database in the field of telephone, address and electronic mail contact
`
`directory information via a global computer information network; providing an on-line computer
`
`database featuring data and images Via a global computer information network; and providing an
`
`on-line computer database in the field of school, college, military, family, colleagues, social
`
`interest groups and friend reunions, via a global computer information network.
`
`09/27/2002 TSIITH
`
`00000137 76374996
`
`01 F0237?
`
`300.00 M
`
`NOTICE OF OPPOSITION - 1
`
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`CLASSMATES ONLINE, lNC., D/B/A
`CLASSMATESCOM,
`
`Opposition No:
`
`E3.
`l
`?,
`C’)
`:32
`,,,., ;
`
`V_
`
`Opposer,
`
`In re Application Serial No. 76/374,996
`
`Filed: February 26, 2002
`Mark: CLASMATE
`
`U‘
`“’
`
`‘-‘
`
`CLAS INFORMATION SERVICES,
`
`Published: September 17, 2002
`
`
`A licant.
`
`W9-19-2002
`
`U.S. Paunra TMOfc/TM Mail Rom, gt "0
`
`NOTICE OF OPPOSITION
`
`Classmates Online, Inc., d/b/a Classmates.com, a Washington Corporation with a
`
`principal place of business at 1100 Oakesdale Avenue S.W., Renton, WA 98055, U.S.A.
`
`(“Opposer”), believes that it will be damaged by registration of the mark shown in the above-
`
`identified application, and hereby opposes the same.
`
`The grounds for opposition are as follows:
`
`1.
`
`Opposer is the applicant/owner of the service marks “CLASSMATESCOM” and
`
`“CLASSMATES,” which have been filed and/or registered with the United States Patent and
`
`Trademark Office (Reg. No. 2,584,325, and Serial Nos. 75/872759 and 76/258,328 for classes
`
`35, 38, 41 and 42), for on-line and database—related services, including the following: providing
`
`an on-line computer database in the field of telephone, address and electronic mail contact
`
`directory information via a global computer information network; providing an on-line computer
`
`database featuring data and images Via a global computer information network; and providing an
`
`on-line computer database in the field of school, college, military, family, colleagues, social
`
`interest groups and friend reunions, via a global computer information network.
`
`09/27/2002 TSIITH
`
`00000137 76374996
`
`01 F0237?
`
`300.00 M
`
`NOTICE OF OPPOSITION - 1
`
`
`
`
`
`2.
`
`Opposer has been engaged in interstate commerce in the business of providing
`
`various services for locating and reuniting people primarily through Opposer’s website under its
`
`marks “CLASSMATES.COM” and “CLASSMATES” since 1995. Opposer’s use has been valid
`
`and continuous since the date of first use, and it has not been abandoned. Opposer’s marks are
`
`symbolic of extensive goodwill and consumer recognition built up by Opposer through
`
`substantial amounts of time and effort in advertising and promotion. Opposer’s marks are well-
`
`known by consumers throughout the United States, and have become famous marks.
`
`3.
`
`The mark proposed for registration by Applicant, “CLASMATE,” is confusingly
`
`similar to Opposer’s marks “CLASSMATES.COM” and “CLASSMATES” as it is a misspelled
`
`version of “CLASSMATES” and it is to be used for goods related to Opposer’s services:
`
`“computer software for accessing and downloading information contained in public records
`
`databases.” Applicant’s use of the mark it has proposed for registration would therefore be taken
`
`by the public as an endorsement by Opposer of Applicant’s goods or services. Further, any
`
`problem encountered with Applicant’s goods or services would necessarily reflect upon and
`
`seriously injure the business and personal reputation of Opposer, and the use and registration of
`
`“CLASMATE” would dilute Opposer’s marks.
`
`4.
`
`If Applicant is granted the registration herein opposed, it would thereby obtain at
`
`least primafacie exclusive right to the use of its mark, and such registration would damage
`
`Opposer.
`
`WHEREFORE, Opposer prays that the application Serial No. 76/374,996 be rejected, and
`
`that the mark therein sought for the stated goods and services be denied and refused.
`
`NOTICE OF OPPOSITION - 2
`
`
`
`
`
`A duplicate copy of this Notice of Opposition and the fee required by § 2.6(a)(17) are
`
`enclosed herewith. A copy of this Notice of Opposition is being served upon the Applicant
`
`simultaneously herewith.
`
`‘7’/‘7"0 3»
`
` Date:
`
`Kar n Wetherell Davis
`
`Jo D. Ostrander
`
`Elliott, Ostrander & Preston, P.C.
`707 East Harrison Street
`
`Seattle, WA 98102 USA
`
`(206) 325-1244
`Karen@eoplaw.corn
`
`Attorneys for Opposer
`
`NOTICE OF OPPOSITION - 3
`
`
`
`
`
`. CERTIFICATE OF EXPRESS MAIL
`UNDER 37 C.F.R. 1.10
`
`TO THE COMMISSIONER FOR TRADEMARKS
`
`Express Mail Label No. EV 076297615 US
`Date of Deposit: September 19, 2002
`
`I hereby certify that a true and correct copy of the NOTICE OF OPPOSITION of
`
`Classmates Online, Inc. is being deposited with the United States Postal Service, postage
`
`pre—paid, in duplicate (original plus one copy) as Express Mail, mailing label no.
`
`EV 076297615 US, in an envelope addressed to Commissioner for Trademarks, Box
`
`TTAB - Fee, 2900 Crystal Drive, Arlington, VA 22202.
`
`DATED this 19
`
`fie.
`\
`day of September, 2002.
`
`
`
`Niel Chamberlin-Wolfe
`
`Paralegal
`Elliott, Ostrander & Preston, P.C.
`
`
`
`
`
`‘CERTIFICATE OF MAILING
`UNDER 37 C.F.R. 1.8
`
`TO THE COMMISSIONER FOR TRADEMARKS
`
`Date of Deposit: September 19, 2002
`
`I hereby certify that a true and correct copy of the NOTICE OF OPPOSITION of
`
`Classmates Online, Inc. is being deposited with the United States Postal Service with
`
`sufficient postage as first class mail on the date indicated above, in an envelope addressed
`
`to John E. Russell, Allmark Trademark Service, 5327 Romford Drive #A, San Jose,
`
`California 95124.
`
`LP»
`DATED this I 4 day of September, 2002.
`
`; Niel Chamberlin-Wolfe
`
`Paralegal
`Elliott, Ostrander & Preston, P.C.
`
`
`
`
`
`ELLIOTT,
`OSTRANDER&
`
`PRESTON, P.C.
`
`UNION BANK OF CALIFORNIA TOWER
`
`707 SW WASHINGTON STREET, SUITE I500
`PORTLAND, OREGON 97205
`TELEPHONE: (503) 224-71 12
`FACSIMILE: (503) 224-7819
`WEBSITE: www.eoplaw.com
`
`OFFICES ALSO LOCATED IN SEATTLE, WA
`
`09-19-2002
`
`U.S. Pitlnt & TMOTCITM Mail Rcpt. D3. #40
`
`KAREN WETI-IERELL DAVIS
`WILLIAM A. DREW
`JEROME F. ELLIOTT
`JOHN D. OSTRANDER
`ROBERT J. PRESTON
`INGRID S. SPRANGLE
`
`MEMBERS ARE LICENSED IN
`OREGON, WASHINGTON,
`CALIFORNIA, ALASKA & OHIO
`NIEL CHAM BERLIN-WOLFE
`PARALEGAL
`
`EMAIL: niel@eoplaw.com
`
`September 19, 2002
`
`VIAEXPRESSMAIL. EVU7EIE"l7|:-l5U$
`
`Box TTAB FEE
`
`Commissioner for Trademarks
`
`2900 Crystal Drive
`Arlington, VA 22202-3513
`
`Re:
`
`“CLASMATE,” Serial No. 76/374,996
`Notice of Opposition
`
`Dear Sir or Madam:
`
`Enclosed please find the following documents:
`
`Enclosed please find the following items:
`
`*7
`
`8-13080
` ZS=2!$33‘
`
`.~c."‘.4‘.‘*’!"!"
`
`5
`
`Original and one copy of the Notice of Opposition;
`Certificate of Mailing to Commissioner of Trademarks;
`Certificate of Mailing to Opposing Counsel;
`A check in the amount of $300.00; and
`A self-addressed, stamped return post card.
`
`Please date-stamp the return acknowledgment card, and return it to our Offices. Thank you.
`
`Please telephone if you have any questions.
`
`Very truly yours,
`
`ELLIOTT, OSTRANDER & PRESTON, P.C.
`
`/M, CJMw;—w¢Ql»»C
`
`Niel Chamberlin-Wolfe
`
`Paralegal
`
`zncw
`
`Enclosures
`
`cc:
`
`Tara McGuane (w/ encl.)
`Karen Wetherell Davis (w/ encl.)
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