Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA494952
`ESTTA Tracking number:
`09/17/2012
`
`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
`
`Undefeated, Inc.
`09/19/2012
`
`112-1/2 South La Brea Ave
`Los Angeles, CA 90036
`UNITED STATES
`
`Correspondence
`information
`
`John R. Sommer
`John R. Sommer, Attorney-at-Law
`17426 Daimler Street
`Irvine, CA 92614
`UNITED STATES
`sommer@stussy.com Phone:(949) 752-5344
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`85498563
`09/17/2012
`
`Publication date
`Opposition
`Period Ends
`
`05/22/2012
`09/19/2012
`
`Collins, Vickie
`Apartment 2 3453 Sunnyside Drive
`Portage, IN 46368
`UNITED STATES
`Goods/Services Affected by Opposition
`
`Class 025.
`All goods and services in the class are opposed, namely: T-shirts
`
`Grounds for Opposition
`
`Deceptiveness
`False suggestion of a connection
`Priority and likelihood of confusion
`Dilution
`
`Trademark Act section 2(a)
`Trademark Act section 2(a)
`Trademark Act section 2(d)
`Trademark Act section 43(c)
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`Registration Date
`
`3218703
`
`03/13/2007
`
`Application Date
`
`02/02/2005
`
`Foreign Priority
`Date
`
`NONE
`
`
`ESTTA494952
`ESTTA Tracking number:
`09/17/2012
`
`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
`
`Undefeated, Inc.
`09/19/2012
`
`112-1/2 South La Brea Ave
`Los Angeles, CA 90036
`UNITED STATES
`
`Correspondence
`information
`
`John R. Sommer
`John R. Sommer, Attorney-at-Law
`17426 Daimler Street
`Irvine, CA 92614
`UNITED STATES
`sommer@stussy.com Phone:(949) 752-5344
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`85498563
`09/17/2012
`
`Publication date
`Opposition
`Period Ends
`
`05/22/2012
`09/19/2012
`
`Collins, Vickie
`Apartment 2 3453 Sunnyside Drive
`Portage, IN 46368
`UNITED STATES
`Goods/Services Affected by Opposition
`
`Class 025.
`All goods and services in the class are opposed, namely: T-shirts
`
`Grounds for Opposition
`
`Deceptiveness
`False suggestion of a connection
`Priority and likelihood of confusion
`Dilution
`
`Trademark Act section 2(a)
`Trademark Act section 2(a)
`Trademark Act section 2(d)
`Trademark Act section 43(c)
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`Registration Date
`
`3218703
`
`03/13/2007
`
`Application Date
`
`02/02/2005
`
`Foreign Priority
`Date
`
`NONE
`
`
`
`Word Mark
`Design Mark
`
`UNDEFEATED
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 025. First use: First Use: 2001/02/00 First Use In Commerce: 2002/11/00
`Clothing, namely, shirts, pants, t-shirts, footwear, headwear, baseball caps,
`shorts, sweatshirts, jackets, shoes, and wrist bands
`
`U.S. Registration
`No.
`Registration Date
`
`2754149
`
`08/19/2003
`
`Word Mark
`Design Mark
`
`UNDEFEATED
`
`Application Date
`
`02/04/2002
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 035. First use: First Use: 2002/03/01 First Use In Commerce: 2002/03/01
`Retail store services featuring a wide variety of shoes, including athletic shoes
`
`U.S. Registration
`No.
`Registration Date
`
`3406295
`
`04/01/2008
`
`Word Mark
`
`UNDEFEATED
`
`Application Date
`
`03/15/2007
`
`Foreign Priority
`Date
`
`NONE
`
`
`
`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 035. First use: First Use: 2002/11/01 First Use In Commerce: 2002/11/01
`Online retail services and retail store services in the fields of footwear, athletic
`accessories, athletic apparel, clothing, headwear, athletic bags, sports bags,
`backpacks
`
`Attachments
`
`78559308#TMSN.jpeg ( 1 page )( bytes )
`76366232#TMSN.gif ( 1 page )( bytes )
`77132373#TMSN.jpeg ( 1 page )( bytes )
`NO-DEFEAT.opposition.pdf ( 5 pages )(129928 bytes )
`
`Certificate of Service
`
`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.
`
`Signature
`Name
`Date
`
`/John R. Sommer/
`John R. Sommer
`09/17/2012
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`in the matter of Application Serial No. 85/498563
`Published for Opposition in the OFFICIAL GAZETTE of May 22, 2012
`
`UNDEFEATED, INC.,
`
`Opposer,
`
`I
`
`Opposition No.:
`
`V.
`
`.
`
`VICKIE COLLINS,
`
`Applicant.
`
`NOTICE OF OPPOSITION
`
`Undefeated, Inc. (“Opposer”), a California corporation having its principal place of
`
`business at 112-1/2 South La Brea Avenue, L03 Angeles, California 90036, believes it will be
`
`damaged by registration of the word mark NO DEFEAT and Device shown in Serial No.
`
`85/493,563 in International Class 25, filed by Vickie Collins (“Applicant”), and hereby opposes
`
`the same.
`
`As grounds for this Opposition, it is alleged:
`
`1.
`
`On or about December 19, 201 1, Applicant filed an intent to use application with
`
`the United States Patent and Trademark Office to register NO DEFEAT and Device mark
`
`(hereinafter “Applicant’s Mark”) for “T~shirts” in International Class 25. The application for
`
`Applicant’s Mark was published in the Official Gazette on May 22, 2012. Opposer requested,
`
`and was granted a extensions of time to oppose Applicanfs Mark until September 19, 2012.
`
`
`
`2.
`
`Since at least as early as 2002, Opposer has been using its UNDEFEATED Mark
`
`on a variety of goods and services as listed on the registrations listed below, among others goods
`
`and services. Opposer is the owner of the registrations listed below:
`
`Class
`
`Reg. No.
`
`Reg. Date
`
`Goods
`
`artial list
`
`25
`35
`35
`
`T 3,213,703
`2,754,149
`3,406,215
`
`03/13/07
`08/ 19/03
`04/01/08
`
`Clothing, footwear, headgear
`Retail store services
`Retail store services featuring clothing,
`footwear, headgear
`
`3.
`
`g
`
`There is no issue as to priority. Applicant’s priority date for her intent—to—use '
`
`application is the tiling date, December 19, 2011. Opposefs priority dates and registration dates
`
`are long before App1icant’s priority date.
`
`4.
`
`Since long prior to App1icant’s filing of the application for Appiicanfis Mark (no
`
`use of Applicant’s Mark having been alleged by Applicant so Appiicant’s priority date is the
`
`filing date), Opposer has made substantial and continuous use of the UNDEFEATED Mark in
`
`interstate, foreign, and intrastate commerce on and in connection with the advertising,
`
`promotion, and sale of its goods, since as early as 2002.
`
`5.
`
`By virtue of the aforesaid advertising, promotion, and sales, and by virtue of the
`
`excellence of its products, Opposefs UNDEFEATED Mark has come to represent exceedingly
`
`valuable goodwill owned by Opposer.
`
`6.
`
`- The goods on which Oppose: uses its UNDEFEATED Mark and the goods for
`
`which Applicant seeks to register Applicantfs Mark are identical or are cioseiy related.
`
`in the
`
`absence of any restrictions, Applicanfs Appiicatiori, if registered, would allow her goods to be
`
`sold through the same channels of trade and to the same class of purchasers as Opposer’s.
`
`
`
`7.
`
`Opposer’s UNDEFEATED Mark and Applicant’s Mark are confusingly and
`
`substantially similar in that they have identical meaning.
`
`8.
`
`Use by Applicant of Applicar1t’s Mark will be likely to cause confusion, mistake,
`
`or deception with Opposer’s UNDEFEATED Mark, and result in the belief that Applicant or
`
`Applicanfs goods are in some Way legitimately connected with, sponsored by, or approved by
`
`Opposer, resulting in damage and injury to Opposer. Persons familiar with Opp0ser’s
`
`UNDEFEATED Mark would be likely to buy Applicanfs 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 Applicanfs 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 UNDEFEATED Mark.
`
`9.
`
`Applicanfs Mark, if registered, will be deceptive, in violation of Section 2(a).
`
`10.
`
`Applicant’s Mark, if registered, will disparage or falsely suggest a connection
`
`between Applicant and Opposer and their respective goods, in violation of Section 2(a).
`
`ll.
`
`Applicant’s Mark, if registered, will so resemble 0pposer’s Marks registered on
`
`the Principal Register of the U.S. Patent & Trademark Office, and Opposer’s Marks in used in ,
`
`the United States and not abandoned, as to be likely, when used on or in connection with the
`
`goods of the Applicant, as to cause confusion, mistake or to deceive, in violation of Section 2(d).
`
`I2.
`
`Applicanfis Mark, if registered, will dilute the distinctiveness of Opposer’s Mark
`
`in violation of Section 43(c).
`
`
`
`13.
`
`Any use Applicant has made or may make ofApp1ica;nt’s Mark, is and wili be
`
`without Opposer’s consent or permission.
`
`WHEREFORE, registration by Applicant of the aforesaid App1icant’s Mark. for the
`
`aforesaid goods will be damaging to Opposer, and Opposer therefore requests that the
`
`Opposition be sustained.
`
`
`1111 R. Sommer
`
`17426 Daimler Street
`
`Irvine, California 92614
`(949) 7526344
`Fax: (949) 7526439
`SOMMER@STUSSY.COM
`
`Attorneys for Opposer Undefeated, Inc.
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that, on the date of execution of this certificate, a true copy of the
`
`foregoing OPPOSITION was served by depositing same in the mail, first class postage prepaid,
`
`addressed to:
`
`Vickie Coilins
`
`Apartment 2
`3453 Sunnyside Drive
`Portage, INDIANA 46368
`
`with a courtesy copy by email to: teachersec@sbeg1obai.net
`
`Dated: September 17, 2012
`
`\\
`
`John R. Somme:
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