e‘;
`IlllllllllllllllllllllIlllllllllllllllllllllllllll
`
`03-10-2003
`
`U.S, Pauent & TMOfcITM Mail Flcpt Dt. #01
`
`IN THE ,UNITED STATES PATENT AND TRADEMARK OFFICE
`a BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of Application Serial No. 78/092,463
`Published in the Ofiicial Gazette on January 7, 2003 at TM 144
`
`The Chicago Skateboard Company d/b/a
`Uprise Skateshop,
`
`Opposer,
`
`v.
`
`Apache Minnesota Thom McAn, Inc.
`
`Applicant.
`
`BOX TTAB
`
`FEE
`
`Assistant Commissioner for Trademarks
`
`2900 Crystal Drive
`Arlington, VA 22202-3513
`
`Opposition No.
`
`\y;\./\/\/\/\/\/\../\/s./\/
`
`NOTICE OF OPPOSITION
`
`The Chicago Skateboard Company, Inc., a corporation organized and existing under the
`
`laws of the State of Illinois, doing business as Uprise Skateshop and having its principal place of
`
`business at 1820 North Milwaukee Avenue, Chicago, Illinois 60647 ("Opposer") believes that it
`
`will be damaged by registration of the mark shown in Serial Number 78/092,463 and hereby
`
`opposes the same. As grounds for its opposition, Opposer states:
`
`1.
`
`Apache Minnesota Thom McAn, Inc., ("Applicant") seeks to register the mark
`
`UPRISE for "footwear and clothing, namely,
`
`shirts,
`
`t-shirts,
`
`sweatshirts,
`
`jackets, pants,
`
`sweatpants, shorts, hats, gloves and socks," "sporting goods and equipment, namely, skateboards,
`
`inline skates, snowboards, and related accessories therefore, namely, wheels, bearings, bindings,
`
`wax, safety straps and carriers; pads and padding for skateboarding,
`
`inline skating and
`
`03/24/2003
`
`IWIDERSO 00000075 78092563 -
`
`01 FC:6402
`
`300.00 OP
`
`
`IlllllllllllllllllllllIlllllllllllllllllllllllllll
`
`03-10-2003
`
`U.S, Pauent & TMOfcITM Mail Flcpt Dt. #01
`
`IN THE ,UNITED STATES PATENT AND TRADEMARK OFFICE
`a BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of Application Serial No. 78/092,463
`Published in the Ofiicial Gazette on January 7, 2003 at TM 144
`
`The Chicago Skateboard Company d/b/a
`Uprise Skateshop,
`
`Opposer,
`
`v.
`
`Apache Minnesota Thom McAn, Inc.
`
`Applicant.
`
`BOX TTAB
`
`FEE
`
`Assistant Commissioner for Trademarks
`
`2900 Crystal Drive
`Arlington, VA 22202-3513
`
`Opposition No.
`
`\y;\./\/\/\/\/\/\../\/s./\/
`
`NOTICE OF OPPOSITION
`
`The Chicago Skateboard Company, Inc., a corporation organized and existing under the
`
`laws of the State of Illinois, doing business as Uprise Skateshop and having its principal place of
`
`business at 1820 North Milwaukee Avenue, Chicago, Illinois 60647 ("Opposer") believes that it
`
`will be damaged by registration of the mark shown in Serial Number 78/092,463 and hereby
`
`opposes the same. As grounds for its opposition, Opposer states:
`
`1.
`
`Apache Minnesota Thom McAn, Inc., ("Applicant") seeks to register the mark
`
`UPRISE for "footwear and clothing, namely,
`
`shirts,
`
`t-shirts,
`
`sweatshirts,
`
`jackets, pants,
`
`sweatpants, shorts, hats, gloves and socks," "sporting goods and equipment, namely, skateboards,
`
`inline skates, snowboards, and related accessories therefore, namely, wheels, bearings, bindings,
`
`wax, safety straps and carriers; pads and padding for skateboarding,
`
`inline skating and
`
`03/24/2003
`
`IWIDERSO 00000075 78092563 -
`
`01 FC:6402
`
`300.00 OP
`
`
`
`
`
`snowboarding," and "retail store services in the field of footwear, clothing, and sporting goods
`
`and equipment" (hereinafter Applicant's goods and services), as stated in an intent—to-use
`
`application filed November 8, 2001 and published in the Official Gazette of January 7, 2003 at
`
`. TM 144.
`
`2.
`
`Since at least as early as 1996, Opposer or its predecessor has used the mark
`
`UPRISE in connection with the sale of a wide variety of goods and services in the skateboarding
`
`industry. Such goods and services include but are not limited to the retail sale of skateboarding
`
`equipment, clothing, and other related merchandise. Additionally,
`
`through its widespread
`
`involvement
`
`in skateboarding culture through the production and sponsorship of musical
`
`performances and skateboarding events, Opposer provides a wide range of goods and services
`
`through which the name UPRISE has become well known.
`
`3.
`
`Opposer's use the mark UPRISE is prior to that of Applicant's. Applicant filed its
`
`Intent to Use application on November 8, 2001, which is subsequent to the date Opposer’s mark
`
`was first used in commerce. Opposer’s rights in and to its UPRISE mark and name are superior
`
`to App1icant’s rights in its UPRISE application by virtue of Opposer’s prior longstanding use of
`
`the mark UPRISE in interstate commerce within the United States.
`
`4.
`
`Opposer has expended significant resources in the promotion and advertising of
`
`services under the UPRISE mark and name. Accordingly, Opposer has built a substantial
`
`reputation among its consumers that contributes to the goodwill that its consumers associate with
`
`the UPRISE mark.
`
`5.
`
`Applicant's proposed mark is intended to identify goods and services that are highly
`
`similar to the goods and services provided by Opposer. The class of consumers to whom
`
`Applicant sells or offers for sale its goods and services is identical to the class of consumers that
`
`
`
`
`
`purchase goods and services under Opposer's mark. The purchasers of Opposer's goods and
`
`services are comprised of consumers that place a substantial amount of emphasis on brand names,
`
`and develop strong loyalties thereto.
`
`6.
`
`Opposer’s and Applicant's goods and services are marketed in similar channels of
`
`trade, namely through retail stores, sponsorship of skateboarding activities, and through use on
`
`Internet websites.
`
`7.
`
`App1icant’s proposed mark UPRISE is identical
`
`in sound and appearance to
`
`Opposer’s mark UPRISE.
`
`8.
`
`Applicant's proposed UPRISE mark so nearly resembles Opposer’s mark as to be
`
`likely to be confused with and mistaken for Opposer’s mark. Applicant’s mark is deceptively
`
`similar to Opposer’s marks so as to cause confusion and lead to deception as to the origin of
`
`Applicant’s goods and services associated with the mark.
`
`9.
`
`If Applicant is permitted to use and register the subject mark for its services as
`
`specified in Application serial number 78/092,463, it will cause confusion in trade, as well as damage
`
`and injury to Opposer. Persons familiar with Opposer’s marks would be likely to seek Applicant’s
`
`services as and for those of Opposer. Any such confusion in trade inevitably would result in loss of
`
`sales to Opposer. Furthermore, any defect, objection or fault found with App1icant’s goods and/or
`
`services marketed under its mark would necessarily reflect upon and seriously injure the reputation
`
`that the Opposer has established for its goods and services marketed under its mark.
`
`10.
`
`If Applicant were granted the registration it seeks, it would have at least a prima
`
`facie exclusive right to use the mark UPRISE.
`
`11.
`
`Registration of Applicant's proposed mark would be a source of damage and injury
`
`to Opposer.
`
`
`
`
`
`WHEREFORE, Opposer prays that the application Serial No. 78/092,463 be rejected, and
`
`that the mark therein sought for the goods and services recited be denied and refused.
`
`A duplicate copy of this Notice of Opposition and the fee of $300 required in §2.6(a)(17)
`
`.are enclosed. The Commissioner is authorized to charge payment of any additional fees
`
`associated with this filing or credit any overpayment to Deposit Account No. 04-0257 (Davis,
`
`Mannix & McGrath).
`
`Respectfully submitted,
`
`THE CHICAGO SKATEBO ~RD COMPANY
`
` One of its attomey/
`
`William T. McGrath
`
`Kevin A. Thompson
`Evan D. Brown
`
`DAVIS, MANNIX & MCGRATH
`
`125 S. Wacker Drive, Suite 1700
`
`Chicago, Illinois 60606
`(312) 332-3033 (Voice)
`(312) 332-6376 (Fax)
`
`Dated:
`
`:77 O O03
`
`
`
`
`
`CERTIFICATE OF EXPRESS MAILING
`
`"Express Mail" mailing label number:
`
`_ _ E V ]_l 1, [3 5 7‘ 1, E. 7 3 U S
`
`Date of Deposit:
`
`:1//Q Q 3
`
`I hereby certify that the NOTICE OF OPPOSITION is being deposited with the United
`' States Postal Service as Express Mail, postage prepaid, in an envelope addressed to Box
`TTAB FEE, Commissioner for Trademarks, 2900 Crystal Drive, Arlington, Virginia
`22202-3513 on the date indicated above.
`
`=
`
`Date Signature
`
`I
`ature
`
`Si
`
`-
`
`,
`
`%:q9
`
`rrnted Name
`
`
`
`
`
`..-\
`
`DAVIS, MANNIX & MCGRATH
`ATTORNEYS AT LAW
`125 SOUTH WACKER DRIVE
`SUITE 1700
`CHICAGO, ILLINOIS 60606-4402
`(312) 332-3033
`
`f
`
`March 10, 2003
`
`FAX (312) 332-6376
`
`Via Express Mail
`-BOX TTAB
`
`FEE
`
`Commissioner for Trademarks
`
`2900 Crystal Drive
`Arlington, VA 22202-3513
`
`Re:
`
`A Notice of Opposition — UPRISE — No. 78/092 463
`
`Dear Sir:
`
`Enclosed please find the following documents:
`
`1) The Original and two copies of the Notice of Opposition for the mark
`UPRISE, Serial Number 7 8/092,463 filed on behalf of The Chicago
`Skateboard. Company d/b/a Uprise Skateshop;
`2) A Check in the amount of $300.00 as the filing fee;
`3) A postcard for confirmation of your receipt of this correspondence.
`
`08=6W?L2810%80
`
`The Commissioner is hereby authorized to charge payment of any additional fees
`associated with this filing to Deposit Account No. 04-0257 (Davis, Mannix & McGrath).
`A duplicate copy of this letter is enclosed for charging purposes.
`'
`
`Very truly yours,
`
`DAVIS, MANNIX & MCGRATH
`
`Regina Westry
`Legal Assistant
`
`RLW/St
`
`Enclosures
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