Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA357406
`ESTTA Tracking number:
`07/12/2010
`
`Filing date:
`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
`Granted to Date
`of previous
`extension
`Address
`
`Kansas State University
`07/11/2010
`
`122 Anderson Hall
`Manhattan, KS 66506
`UNITED STATES
`
`Attorney
`information
`
`Alicia Grahn Jones
`Kilpatrick Stockton LLP
`1100 Peachtree Street, Suite 2800
`Atlanta, GA 30309
`UNITED STATES
`tmadmin@kilpatrickstockton.com, aljones@kilpatrickstockton.com,
`hhenderson@kilpatrickstockton.com, brook@kilpatrickstockton.com
`Phone:404-815-6500
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`77804259
`07/12/2010
`
`Publication date
`Opposition
`Period Ends
`
`01/12/2010
`07/11/2010
`
`Roaring Lion LLC
`13 Orion Belt Way
`Hamilton, MT 59840
`UNITED STATES
`Goods/Services Affected by Opposition
`
`Class 041.
`All goods and services in the class are opposed, namely: Providing educational mentoring services
`and programs in the field of land use
`
`Grounds for Opposition
`
`False suggestion of a connection
`Priority and likelihood of confusion
`
`Trademark Act section 2(a)
`Trademark Act section 2(d)
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`Registration Date
`
`1918080
`
`09/12/1995
`
`Application Date
`
`09/12/1994
`
`Foreign Priority
`Date
`
`NONE
`
`
`ESTTA357406
`ESTTA Tracking number:
`07/12/2010
`
`Filing date:
`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
`Granted to Date
`of previous
`extension
`Address
`
`Kansas State University
`07/11/2010
`
`122 Anderson Hall
`Manhattan, KS 66506
`UNITED STATES
`
`Attorney
`information
`
`Alicia Grahn Jones
`Kilpatrick Stockton LLP
`1100 Peachtree Street, Suite 2800
`Atlanta, GA 30309
`UNITED STATES
`tmadmin@kilpatrickstockton.com, aljones@kilpatrickstockton.com,
`hhenderson@kilpatrickstockton.com, brook@kilpatrickstockton.com
`Phone:404-815-6500
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`77804259
`07/12/2010
`
`Publication date
`Opposition
`Period Ends
`
`01/12/2010
`07/11/2010
`
`Roaring Lion LLC
`13 Orion Belt Way
`Hamilton, MT 59840
`UNITED STATES
`Goods/Services Affected by Opposition
`
`Class 041.
`All goods and services in the class are opposed, namely: Providing educational mentoring services
`and programs in the field of land use
`
`Grounds for Opposition
`
`False suggestion of a connection
`Priority and likelihood of confusion
`
`Trademark Act section 2(a)
`Trademark Act section 2(d)
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`Registration Date
`
`1918080
`
`09/12/1995
`
`Application Date
`
`09/12/1994
`
`Foreign Priority
`Date
`
`NONE
`
`
`
`Word Mark
`Design Mark
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 025. First use: First Use: 1993/04/05 First Use In Commerce: 1993/04/12
`clothing, namely hats, T-shirts, sweat shirts, sweat pants, socks, jackets and
`jerseys
`
`U.S. Registration
`No.
`Registration Date
`
`1676180
`
`02/18/1992
`
`Word Mark
`Design Mark
`
`NONE
`
`Application Date
`
`03/22/1991
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`The mark consists of the design of the head of a wildcat.
`
`Class 041. First use: First Use: 1989/04/10 First Use In Commerce: 1989/04/10
`entertainment services at the college level in the form of live athletic contests;
`and educational services; namely, providing courses of instruction at the college
`level
`
`U.S. Registration
`No.
`Registration Date
`
`2726628
`
`06/17/2003
`
`Word Mark
`
`CATBACKERS
`
`Application Date
`
`01/17/2002
`
`Foreign Priority
`Date
`
`NONE
`
`
`
`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 025. First use: First Use: 1980/10/00 First Use In Commerce: 1980/10/00
`clothing, namely, caps, hats, t-shirts, sweatshirts, sweatpants, collared shirts
`Class 035. First use: First Use: 1980/10/00 First Use In Commerce: 1980/10/00
`association services, namely, alumni association for promoting the interests of a
`university's athletic and academic programs
`
`Attachments
`
`74571897#TMSN.gif ( 1 page )( bytes )
`74151591#TMSN.gif ( 1 page )( bytes )
`76360711#TMSN.gif ( 1 page )( bytes )
`Powercat Opposition - Left Facing.pdf ( 14 pages )(165115 bytes )
`
`The undersigned hereby certifies that a copy of this paper has been served upon all parties, at their address
`record by First Class Mail on this date.
`
`Certificate of Service
`
`Signature
`Name
`Date
`
`/agj/
`Alicia Grahn Jones
`07/12/2010
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`KANSAS STATE UNIVERSITY,
`
`)))
`
`In the matter of Application
`Serial No. 77/804,259
`Mark:
`
`
`
`
`Opposition No. ____________
`
`
`
`
`
`)
`
`))
`
`)))))))
`
`)
`
`))
`
`)
`)
`
`NOTICE OF OPPOSITION
`
`Opposer Kansas State University (“Opposer” or the “University”), a public university
`
`located at 122 Anderson Hall, Manhattan, Kansas 66506, believes it will be damaged by the
`
`registration of the design mark underlying application Serial No. 77/804,259, and opposes the
`
`same pursuant to 15 U.S.C. § 1063 and 37 C.F.R. §§ 2.101, 2.104(a). The grounds for this
`
`opposition are as follows:
`
`1.
`
`On information and belief, on August 13, 2009, Applicant Roaring Lion LLC
`
`(“Applicant”) filed an intent-to-use application to register the design mark depicted on the top of
`
`the next page (Serial No. 77/803,259) for use in connection with “providing educational
`
`mentoring services and programs in the field of land use” in International Class 41 (“Applicant’s
`
`Mark”).
`
`
`
`
`
`
`v.
`
`Opposer,
`
`
`ROARING LION LLC,
`
`Applicant.
`
`
`
`
`
`
`
`
`
`
`
`2.
`
`The application for Applicant’s mark was first published for opposition in the
`
`Official Gazette dated January 12, 2010. The University timely filed extensions of time to
`
`oppose this application and thus is allowed until July 12, 2010, to file this Notice of Opposition.
`
`3.
`
`Founded in 1863, the University has eleven colleges and offers undergraduate and
`
`graduate educational and athletic programs. In the 2008-2009 academic year, the University
`
`enrolled a total of 23,520 students from across the United States and from more than 90
`
`countries. The University’s academic and athletic programs are well-known and respected
`
`throughout the United States.
`
`4.
`
`The University’s athletics teams have enjoyed tremendous success. The
`
`University is a member of the Big 12 Conference, which participates in the NCAA Division I.
`
`Since becoming a member of the Big 12 Conference, the University’s sports teams have won 55
`
`conference championships. The University’s football team was ranked #1 nationally during the
`
`1998 season and won the Big 12 Conference championship in 2003. Beginning in the 1993
`
`season and extending through the 2003 season, the University’s football team participated in 11
`
`straight bowl games. The University’s men’s basketball team has had major success, including
`
`23 NCAA basketball tournament appearances and reaching the Final Four 4 times, the Elite
`
`Eight 11 times, and the Sweet Sixteen 16 times. The University’s women’s basketball team has
`
`made 14 NCAA basketball tournament and AIAW tournament appearances, and was crowned
`
`champion of the Women’s National Invitation Tournament following the 2005-2006 season. As
`
`
`
`
`
`a result, the University’s athletic teams have been extensively featured on television broadcasts
`
`and in print and online media nationwide for decades.
`
`5.
`
`For more than eighty years, the University and its athletic teams have been known
`
`as the “Wildcats.” Since 1947, a costumed mascot, named “Willie the Wildcat” has roamed the
`
`sidelines of University Athletic events and made other public appearances in connection with the
`
`University.
`
`6.
`
`In 1989, building on the tradition of the “Willie the Wildcat” mascot and the
`
`University’s “Wildcats” nickname, the University adopted a stylized image of a wildcat profile,
`
`which is depicted below (the “Powercat Design”).
`
`
`The Powercat Design is used extensively by the University. For example, the
`
`7.
`
`Powercat Design is used on the University’s website, appears prominently in University
`
`communications, and is used frequently throughout campus.
`
`8.
`
`The Powercat Design also is extensively used in connection with University
`
`athletics. For example, the Powercast Design appears at the center of the University’s football
`
`field, on University athletic buildings, on coaches’ uniforms, on athletic uniforms, and on the
`
`football team’s helmets, as depicted below.
`
`
`
`
`
`
`
`9.
`
`Because of extensive media coverage of the University’s athletics, literally
`
`millions of fans of the University and of college athletics in general have been exposed to the
`
`University’s Powercat Design.
`
`10.
`
`The University owns a federal registration for the Powercat Design (Reg. No.
`
`1,918,080) for “clothing, namely hats, t-shirts, sweat shirts, sweat pants, socks, jackets and
`
`jerseys” in International Class 25, registered on September 12, 1995, claiming a date of first use
`
`of April 5, 1993.
`
`
`
`A true and correct copy of the Certificate of Registration for the Powercat Design (Reg. No.
`
`1,918,080) is attached as Exhibit 1.
`
`11.
`
`The University has complied with all requirements necessary to maintain its
`
`registration of the Powercat Design (Reg. No. 1,918,080), which is now incontestable under 15
`
`U.S.C. § 1065.
`
`12.
`
`The University owns a federal registration for a shaded version of the Powercat
`
`Design (Reg. No. 1,676,180), depicted at the top of the next page (the “Shaded Powercat
`
`Design”), for “entertainment services at the college level in the form of live athletic contests; and
`
`educational services; namely, providing courses of instruction at the college level” in
`
`
`
`
`
`International Class 41, registered on February 18, 1992, claiming a date of first use of April 10,
`
`1989.
`
`
`
`A true and correct copy of the Certificate of Registration for the Shaded Powercat Design (Reg.
`
`No. 1,676,180) is attached as Exhibit 2.
`
`13.
`
`The University has complied with all requirements necessary to maintain its
`
`registration of the Shaded Powercat Design (Reg. No. 1,676,180), which is now incontestable
`
`under 15 U.S.C. § 1065.
`
`14.
`
`The University owns a federal registration for the mark CATBACKERS (Reg.
`
`No. 2,726,628) for “clothing, namely, caps, hats, t-shirts, sweatshirts, sweatpants, collared shirts”
`
`in International Class 25, and “association services, namely, alumni association for promoting
`
`the interests of a university’s athletic and academic programs” in International Class 35,
`
`registered on June 17, 2003, claiming a date of first use of October 1980. A true and correct
`
`copy of the Certificate of Registration for the mark CATBACKERS (Reg. No. 2,726,628) is
`
`attached as Exhibit 3.
`
`15.
`
`The University has complied with all requirements necessary to maintain its
`
`registration of the CATBACKERS mark (Reg. No. 2,726,628), which is now incontestable under
`
`15 U.S.C. § 1065.
`
`
`
`
`
`16.
`
`The University’s trademarks in paragraphs 5-15 are collectively referred to as the
`
`“University’s Marks.”
`
`17.
`
`As a result of the University’s longstanding and extensive use, the University’s
`
`Marks are symbolic of the extensive goodwill and consumer recognition established by the
`
`University. The University’s Marks have attained a high degree of recognition and
`
`distinctiveness throughout the United States, and particularly in the midwestern United States, in
`
`connection with educational services, apparel, and other goods and services commonly
`
`associated with a university as an educational institution and its athletic department. By virtue of
`
`the University’s expenditure of substantial amounts of time, effort, and money in advertising and
`
`promoting its goods and services, the University’s Marks have come to identify the University’s
`
`athletics and educational services. Purchasers and prospective purchasers, as well as other
`
`members of the public, are familiar with and identify the University’s Marks, and understand and
`
`expect that a wide variety of goods and services offered under the University’s Marks are
`
`affiliated with, sponsored, or licensed by the University. Indeed, the University’s Marks have
`
`become well-known for the University’s goods and services, particularly in the midwestern
`
`United States.
`
`18.
`
`The University will be damaged by the registration of Applicant’s Mark because
`
`the mark and its associated services so resemble the University’s Marks and the associated goods
`
`and services as to be likely to cause confusion, mistake, and deception. Applicant’s Mark is
`
`nearly identical to the mirror image of the University’s Powercat Design. Like the University’s
`
`Powercat Design, Applicant’s Mark consists of the profile of a large feline head, with its ears
`
`pinned back and its fangs bared. Moreover, the services offered under Applicant’s Mark,
`
`educational mentoring services, are identical and/or highly related to the goods and services
`
`
`
`
`
`offered under the University’s Marks.
`
`19.
`
`Persons familiar with the University’s Marks are likely to believe erroneously that
`
`Applicant’s services are offered by the University, or are authorized, licensed, endorsed, or
`
`sponsored by the University, and registration of Applicant’s Mark on the Principal Register will
`
`be inconsistent with the University’s rights in the University’s Marks.
`
`20.
`
`Applicant’s applied-for-mark also falsely suggests a connection with the
`
`University, in violation of Section 2(a) of the Lanham Act, 15 U.S.C. § 1052(a).
`
`21.
`
`There is no issue as to priority. The University adopted and registered the
`
`University’s Marks long before August 12, 2009, the filing date of Applicant’s intent-to-use
`
`application.
`
`22.
`
`The filing fee in the amount of $300.00 is enclosed. The Commissioner is
`
`authorized to debit the deposit account of Kilpatrick Stockton LLP (deposit account no. 11-0855)
`
`for any deficiency in the required fee.
`
`
`
`WHEREFORE, the University requests that Application Serial No. 77/804,259 be
`
`refused registration and this Notice of Opposition be sustained in its favor.
`
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`Respectfully submitted,
`
`
`
`/s/ Alicia Grahn Jones
`R. Charles Henn Jr.
`Alicia Grahn Jones
`Harris W. Henderson
`KILPATRICK STOCKTON LLP
`1100 Peachtree Street
`Suite 2800
`Atlanta, Georgia 30309-4530
`(404) 815-6500
`Attorneys for Opposer
`
`Dated: July 12, 2010
`
`
`
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`CERTIFICATE OF SERVICE
`
`I hereby certify that a true and correct copy of the foregoing NOTICE OF OPPOSITION
`
`was served on Applicant’s counsel on July 12, 2010 via first class mail to:
`
`
`Valerie Balukas
`Morrison & Balukas
`111 N. Last Chance Gulch (3B)
`Helena, MT 59601
`
`/s/ Harris W. Henderson
`Counsel for Opposer
`
`
`
`
`
`
`
`CERTIFICATE OF TRANSMITTAL
`
`I hereby certify that a true copy of the foregoing NOTICE OF OPPOSITION is being
`
`filed electronically with the TTAB via ESTTA on this day, July 12, 2010.
`
`
`/s/ Harris W. Henderson
`Counsel for Opposer
`
`
`
`
`
`
`
`
`
`EXHIBIT 1
`
`
`
`Int. Cl.: 25
`
`Prior U.S. Cl.: 39
`
`Reg. No. 1,918,080
`~ United States Patent and Trademark Office Registered Sep.12,1995
`
`TRADEMARK
`
`PRINCIPAL REGISTER
`
`T
`
`KANSAS STATE UNIVERSITY (KANSAS NOT—
`FOR—PROFIT ASSOCIATION)
`N A
`122 ANDERSO H LL
`MANHATTAN, KS 66506
`
`FOR: CLOTHING, NAMELY HATS,
`T-
`SHIRTS, SWEAT SHIRTS’ SWEAT PANTS,
`SOCKS, JACKETS AND JERSEYS, IN CLASS 25
`(U.S. CL. 39).
`
`FIRST USE
`4-12-1993.
`OWNER OF U.S. REG. NO. 1,676,180.
`
`4«5—1993;
`
`IN COMMERCE
`
`_
`_
`_
`SER. NO. 74 571,897, FILED 9 12 1994.
`
`CHRISIE B. KING, EXAMINING ATTORNEY
`
`
`
`EXHIBIT 2
`
`
`
`Int. CL: 41
`
`Pxfior U.S.’Cl.: 107
`Reg. No. 1,676,180
`. United States Patent and Tradémark Office Registered Feb. 13, 1992
`
`SERVICE MARK
`PRINCIPAL REGISTER .
`
`
`
`KANSAS STATE UNIVERSITY (KANSAS COR-
`PQRATION)
`.
`.
`~
`BRAMLAGE COLISEUM, SUITE 138
`‘ I800 COLLEGE
`MANHATTAN, KS 66502 -
`
`FOR: ENTERTAINMENT SERVICES AT THE
`COLLEGE LEVEL IN THE FORM OF LIVE
`ATHLETIC CONTESTS; AND EDUCATIONAL
`SERVICES; NAMELY, PROVIDING COURSES
`OF INSTRUCTION AT THE COLLEGE LEVEL,
`IN CLASS 41 ('U.S. CL. 107).
`
`IN COMMERCE
`FIRST. USE 4-to-1989;‘
`I
`4-10-1939,
`THE MARK IS LINED FOR THE COLOR
`PURPLE.
`~
`'
`'
`TI-IE MARK CONSISTS OF THE DESIGN OF
`THE HEAD OF A WILDCAT.
`’
`
`SER. NO. 74—IS1,591, FILED 3-22-199R1.'
`
`COLLEEN SCI-IALLOCK, EXAMINING AT-
`TQRNEY
`g
`‘
`
`
`
`
`
`
`
`..._._.....-......_--.-.---......,..._..........._.,._.,...........1‘........_1_..,._._
`
`
`
`
`
`
`
`
`
`EXHIBIT 3
`
`
`
`Int. Cls.: 25 and 35
`
`Prior U.S. Cls;: 22, 39, 100, 101 and 102
`
`United States Patent and Trademark Office
`
`Reg. No. 2,726,628
`Registered June 17, 2003
`
`TRADEMARK
`
`SERVICE MARK
`
`PRINCIPAL REGISTER
`
`CATBACKERS
`
`KANSAS STATE UNIVERSITY G{ANSAS COR-
`PORATION)
`122 ANDERSON HALL
`
`MANHATTAN, KS 66506
`
`FOR: CLOTHING, NAMELY, CAPS, HATS, T-
`SHIRTS, SWEATSHIRTS, SWEATPANTS, COL-
`LARED SHIRTS, IN CLASS 25 (US. CLS. 22 AND 39).
`
`FOR: ASSOCIATION SERVICES, NAMELY,
`ALUMNI ASSOCIATION FOR PROMOTING THE
`INTERESTS OF A UNIVERSITY’S ATHLETIC AND
`ACADEMIC PROGRAMS, IN CLASS 35 (U.S. CLS.
`100, 101 AND 102).
`
`FIRST USE 10-0-1980; IN COMMERCE 10-0-1980.
`
`SER. NO. 76-360,711, FILED 1-17-2002.
`
`FIRST USE 10-0-1980; IN COMMERCE 10-0-1980.
`
`DANIEL CAPSI-IAW, EXAMINING ATTORNEY
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