Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA383441
`ESTTA Tracking number:
`12/13/2010
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91197264
`Defendant
`Means, Danny
`Raj Abhyanker
`Raj Abhyanker, P.C.
`Suite 8 1580 West El Camino Real
`Mountain View, CA 94040
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`trademarks@rajpatent.com
`Answer
`Vandana Balakrishnan
`trademarks@rajpatent.com
`/Vandana Balakrishnan/
`12/13/2010
`answer_danny_means.pdf ( 6 pages )(104155 bytes )
`
`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE
`
`TRADEMARK AND APPEAL BOARD
`
`In the Matter of:
`
`Application Serial No. 85025902
`
`Mark “Rugby Tuff”
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`Published: October 5, 2010
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`Applicant: Danny Means
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`___________________________________________________ __X
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`PRL USA HOLDINGS, INC.
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`Opposition Number: 91197264
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`—against—
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`DANNY MEANS,
`
`Opposer,
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`Applicant.
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`___________________________________________________ __X
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`Box: TTAB
`
`Commissioner of Trademarks
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`P.O. Box 1451
`
`Arlington, VA 22313-1451
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`ANSWER TO NOTICE OF OPPOSITION
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`Applicant Danny Means (hereinafter “Applicant”), by its attorneys, hereby submits its
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`Answer to the notice of Opposition (hereinafter “Opposition”) filed by PRL USA Holdings, Inc.
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`(hereinafter “Opposer”) dated November 4, 2010 as follows:
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`

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`. Denied. Applicant lack sufficient information or knowledge to form a belief as to the
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`truth or falsity of the allegations contained in paragraph 1.
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`Denied. Applicant lack sufficient information or knowledge to form a belief as to the
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`truth or falsity of the allegations contained in paragraph 2.
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`Denied. Applicant lack sufficient information or knowledge to form a belief as to the
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`truth or falsity of the allegations contained in paragraph 3.
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`Denied. Applicant lack sufficient information or knowledge to form a belief as to the
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`truth or falsity of the allegations contained in paragraph 4.
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`Denied. Applicant lack sufficient information or knowledge to form a belief as to the
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`truth or falsity of the allegations contained in paragraph 5.
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`Denied. Applicant lack sufficient information or knowledge to form a belief as to the
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`truth or falsity of the allegations contained in paragraph 6.
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`Denied. Applicant lack sufficient information or knowledge to form a belief as to the
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`truth or falsity of the allegations contained in paragraph 7.
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`Denied. Applicant lack sufficient information or knowledge to form a belief as to the
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`truth or falsity of the allegations contained in paragraph 8.
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`Denied. Applicant lack sufficient information or knowledge to form a belief as to the
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`truth or falsity of the allegations contained in paragraph 9.
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`10.
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`ll.
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`Denied. Applicant lack sufficient information or knowledge to form a belief as to the
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`truth or falsity of the allegations contained in paragraph 10.
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`Denied. Applicant lack sufficient information or knowledge to form a belief as to the
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`truth or falsity of the allegations contained in paragraph ll.
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`

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`12.
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`13.
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`Denied. Applicant lack sufficient information or knowledge to form a belief as to the
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`truth or falsity of the allegations contained in paragraph 12.
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`Denied. Applicant lack sufficient information or knowledge to form a belief as to the
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`truth or falsity of the allegations contained in paragraph 13.
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`14.
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`Admitted.
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`15.
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`Admitted.
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`16.
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`Admitted.
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`17.
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`Denied. Applicant is in the process of commencing use of Applicant’s mark in
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`commerce. Opposer lacks sufficient information as to the truth contained in paragraph 17.
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`18.
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`Denied.
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`19.
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`20.
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`21.
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`Denied. Applicant lack sufficient information or knowledge to form a belief as to the
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`truth or falsity of the allegations contained in paragraph 19.
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`Denied. Applicant lack sufficient information or knowledge to form a belief as to the
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`truth or falsity of the allegations contained in paragraph 20.
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`Denied. Applicant lack sufficient information or knowledge to form a belief as to the
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`truth or falsity of the allegations contained in paragraph 21.
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`22.
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`Denied.
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`23.
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`24.
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`Denied. Applicant believes that the Applicant’s mark is sufficiently distinct and unrelated
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`to Opposer’s mark.
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`Denied. Applicant lack sufficient information or knowledge to form a belief as to the
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`truth or falsity of the allegations contained in paragraph 24.
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`25.
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`Denied.
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`

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`26.
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`27.
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`28.
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`29.
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`Denied. Applicant lack sufficient information or knowledge to form a belief as to the
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`truth or falsity of the allegations contained in paragraph 26.
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`Denied. Applicant lack sufficient information or knowledge to form a belief as to the
`
`truth or falsity of the allegations contained in paragraph 27.
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`Denied. Applicant lack sufficient information or knowledge to form a belief as to the
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`truth or falsity of the allegations contained in paragraph 28.
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`Denied. Applicant lack sufficient information or knowledge to form a belief as to the
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`truth or falsity of the allegations contained in paragraph 29.
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`30.
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`Denied.
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`31.
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`Denied.
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`32.
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`Denied.
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`33.
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`Denied.
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`34.
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`Denied.
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`35.
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`36.
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`37.
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`38.
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`39.
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`AFFIRMATIVE DEFENSES
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`Opposer fails to state any claim upon which relief can be granted.
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`Opposer’s marks are weak and are entitled to a narrow scope of protection.
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`There is no likelihood of confusion, mistake or deception, because, inter alia, Opposer’s
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`and Applicant’s mark are not confusingly similar based on the inherent differences in the
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`marks. Opposer’s marks and Applicant’s RUGBY TUFF are sufficiently dissimilar in
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`appearance, sound and meaning to avoid a likelihood of confusion.
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`Opposer will not be damaged by Applicant’s mark.
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`The opposition is barred by the doctrines of acquiescence, laches and/or estoppel, in that
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`numerous other persons(including others not listed below) in Applicant’s class 25 and
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`

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`other classes that have used and continue to use the designation RUGBY and variations
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`thereof without objection from Opposer. While the following list is certainly not
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`exhaustive, it is clear that there have been many registrations even in Class 25 that
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`contain the term RUGBY:
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`TRADEMARK
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`REG. NO. GOODS/SERVICES
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`RUGBY GIRL
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`3797575
`
`RUGBY IMPORTS
`
`1271875
`
`Class 25: Screen printed and embroidered t—shirts
`and tank tops
`
`Class 25: Clothing for athletic activities— namely
`jerseys and shorts for the sport of rugby football
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`LIVE FOR
`RUGBY
`
`3802965
`
`Class 25 : Polo shirts, rugby shirts; t—shirts
`
`ROOKIE RUGBY
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`3778959
`
`Class 25 : Caps; shirts; t—shirts.
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`M RUGBY CLUB
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`3157599
`
`BACK OFF
`RUGBY
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`RUGBY XV
`
`3811947
`
`3627932
`
`KUDU RUGBY
`
`3044232
`
`Class 25: Bottoms; jerseys, rugby tops; shirts; shorts;
`sweat shirts; tops; warm up suits
`
`Class 25: Athletic apparel, namely shirts, pants,
`jackets, caps, athletic uniforms; T—shirts.
`
`Class 25: Rugby shirts, rugby shorts, rugby tops, T-
`shirts, polo shorts, sports shirts with short sleeves,
`tracksuits, sweat pants, sweat suits, all for use in the
`sport of playing rugby
`
`Class 25: Rugby jerseys, rugby shorts, leisure shorts,
`dress shirts, T—shirts, golf shirts, socks, baseball
`caps, blazers, long sleeve fleece jackets, fleece vests,
`ties and padded stadium jackets to retail stores that
`are contemporaneously and generally selling rugby
`sports equipment and to rugby teams
`
`RUGBY
`NORTHWEST
`COMBIAKNIT
`
`1988799
`
`Class 25 : Mens and women’s clothing, namely
`pants, shorts and shirts
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`RUGBY HEAVEN 2869235
`
`RUGBY
`
`3535799
`
`Class 41: Providing online information in the fields
`of sports, sports entertainment and cultural activities,
`namely sports matches, via local networks and
`global computer networks.
`Class 5: house mark for a full line of vitamins, mineral
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`supplements, nutritional supplements and non-
`prescription pharmaceutical products, namely, analgesics;
`antacids; antibiotic ointment; antifungal powders for
`medical use; anti—emetics; antihistamines; anti-
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`inflammatories; anti—pyretic preparations; decongestants;
`digestive aids, namely, acidophilus cultures and enzymes
`to aid in the digestion of milk; enema preparations;
`
`

`
`RUGBY
`
`RUGBY (now
`cancelled but mark
`
`2733079
`
`2431257
`
`laxatives; ophthalmic preparations, namely, eyedrops,
`artificial tears...
`
`Class 9, 42: surveying apparatus
`
`Class 3, 5 and 10: BATH Oil, NON—MEDICATED
`SKIN lotion
`
`components thereof
`
`was registered in
`2001)
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`RUBGY
`
`1695763
`
`Class 7 and 12: Truck body lift hoists and structural
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`40. Opposer’s marks are not famous as evidenced by the registrations and allowances of
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`numerous other marks that contain RUGBY. A few of the registered marks can be found
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`in the table above.
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`41. Applicant’s clients are sophisticated, which avoids a likelihood of confusion.
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`WHEREFORE, Applicant requests that the opposition be dismissed and that Serial No.
`
`85025902 be allowed to register.
`
`Date, December 13, 2010
`
`Respectfully submitted,
`
`Vandana Balakrishnan
`
`RAJ ABHYANKER P.C.
`
`1580 W. El Camino Real, Suite 8,
`
`Mountain View, CA 94040
`650-965-8731
`
`vandana@rajpatentcom
`Attorneys for Applicant