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IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the matter of Application Serial No. 76/436,318
`Published for Opposition in the OFFICIAL GAZETTE of March 18, 2003
`
`, 'l"""l"'
`
`ANTHONY HAWK,
`Opposer,
`
`V.
`
`APOGEE SOFTWARE, LTD.,
`Applicant.
`
`:
`:
`
`Opposition No..
`
`U.S.
`
`06-30-2003
`
`.
`Patent & TMOfc/TM Mall ficpt D1, #22
`
`NOTICE OF OPPOSITION
`
`‘I""fi-s-5,‘
`
`"1
`
`Anthony Hawk (“Opposer”), is an individual having his principal place of business at_
`
`31878 Del Obispo, Suite 118-602, San Juan Capistrano, CA 92675, believes he will be damaged
`
`by registration of the mark TOMMY HAWK shown in Serial No. 76/436,318 in International
`
`Class 09, filed by Apogee Software Ltd., (“Applicant”), and hereby opposes the same.
`
`As grounds for this Opposition, it is alleged:
`
`1.
`
`On or about July 31, 2002, Applicant filed an intent to use application with the
`
`United States Patent and Trademark Office to register TOMMY HAWK (hereinafter
`
`“Applicant’s Mark”) for “computer game software and printed instruction manuals or hint books
`
`when sold together therewith as a unit; and computer software featuring computer games that can
`
`be downloaded through a global computer network.” in International Class 09.
`
`2.
`
`Opposer, commonly known as TONY HAWK, is the world’s most famous
`
`skateboarder. He has appeared innumerable times on television, in newspapers and magazines.
`
`07/10/E003 SEDURRDS 00000163 76436318
`300.00 UP
`
`01 FD:640E
`
`Oppositiondoc
`
`1
`
`

`
`
`
`*3
`
`In addition, he has licensed the use of his name on many different types of products, the sales of
`
`which exceed hundreds of millions of dollars’ worth of products.
`
`3.
`
`Since at least as early as October 7, 1999, Opposer has been using TONY HAWK
`
`for computer games, including one of the best selling computer games of all times, TONY
`
`HAWK’S PRO SKATER.
`
`4.
`
`Opposer is the owner of U.S. Trademark Applications S/N 76/327,639, for TONY
`
`HAWK, filed October 19, 2001, and allowed January 21, 2003, and S/N 76/478,420, for TONY
`
`HAWK’S PRO SKATER, filed December 21, 2002.
`
`5.
`
`There is no issue as to priority. Applicant’s priority date for its intent-to-use
`
`application is later than Opposer’s first use of TONY HAWK and Opposer’s earliest filed
`
`application. Since long prior to Applicant’s filing of the application for Applicant’s Mark (no
`
`use of Applicant’s Mark having been alleged by Applicant), Opposer has made substantial and
`
`continuous use of the TONY HAWK Mark in interstate, foreign, and intrastate commerce on and
`
`in connection with the advertising, promotion, and sale of its goods, since as early as October 7,
`
`1999 for computer games, and long before that for other goods and services.
`
`6.
`
`By Virtue of the aforesaid advertising, promotion, and sales, and by virtue of the
`
`excellence of his products and reputation, Opposer’s TONY HAWK Mark has come to represent
`
`exceedingly valuable goodwill owned by Opposer.
`
`7.
`
`The goods on which Opposer uses its TOMMY HAWK Mark and the goods for
`
`which Applicant seeks to register Applicant’s Mark are closely related, if not identical, and are
`
`sold through the same channels of trade and to the same class of purchasers.
`
`Opposition .doc
`
`2
`
`

`
`
`
`‘ 8.
`
`Opposer’s TONY HAWK Mark and Applicant’s TOMMY HAWK Mark are
`
`confusingly and substantially similar. This is especially true since the only difference between
`
`the marks is consonants that are extremely similar in sound, “M” and “N.”
`
`9.
`
`Use by Applicant of Applicant’s Mark will be likely to cause confusion, mistake,
`
`or deception with Opposer’s Mark, and result in the belief that Applicant or Applicant’s goods
`
`are in some way legitimately connected with, sponsored by, or approved by Opposer, resulting in
`
`damage and injury to Opposer. Persons familiar with Opposer’s Mark would be likely to buy
`
`Applicant’s goods as and for a product made and sold by Opposer. Any such confusion in trade
`inevitably would result in loss of sales to Opposer. Furthermore, any defect, objection, or fault
`
`found with Applicant’s products marketed under Applicant’s Mark would necessarily reflect
`
`upon and seriously injure the reputation that Opposer has established for its products
`
`merchandised under Opposer’s Mark.
`
`10.
`
`Any use Applicant has made or may make of Applicant’s Mark, is and will be
`
`without Opposer’s consent or permission.
`
`Applicant has no good faith intention to use Applicant’s Mark.
`
`WHEREFORE, registration by Applicant of the aforesaid Applicant’s Mark for the
`
`aforesaid goods will be damaging to Opposer, and Opposer therefore requests that the
`
`Opposition be sustained.
`
`Opposer submits herewith the requisite $300.00 filing fee.
`
`Please address all correspondence to John R. Sommer, Esq., Attorney-at-Law, 17426
`
`Daimler Street, Irvine, California 92614.
`
`Oppositiondoc
`
`3
`
`

`
`
`
`This Request is being submitted in triplicate as required by 37 C.F.R. § 2.102(d).
`
`Respectfully submitted,
`
` hn R. Sommer
`
`
`y-at-Law
`
`aimler Street
`Irvine, CA 92614
`(949) 752-5344
`Fax: (949) 752-5439
`SOMMER@STUSSY.COM
`
`
`
`A
`174
`
`Attorney for Opposer
`
`Date of Deposit: June 2_7_, 2003
`
`I hereby certify that this paper or fee is being deposited
`with the United States Postal Service on the date
`indicated above and is addressed to: Assistant
`
`Commissioner for Trademarks, 2900 Crystal Drive,
`Arlingto , Virginia 22202-3513.
`
`
`
`Oppositiondoc
`
`4

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