Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA508447
`ESTTA Tracking number:
`11/30/2012
`
`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
`
`RichardAConte
`12/01/2012
`
`108 North Elm Street
`Greensboro, NC 27401
`UNITED STATES
`
`Attorney
`information
`
`Jeffrey T. Jones
`Gray & Johnson Law, LLP
`108 North Elm Street
`Greensboro, NC 27401
`UNITED STATES
`jeffrey@grayjohnsonlaw.com Phone:336-691-9200
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicants
`
`85613605
`11/30/2012
`
`Reinoso, Alexis
`15863 Ceres Ave
`Fontana, CA 92335
`UNITED STATES
`
`Publication date
`Opposition
`Period Ends
`
`10/02/2012
`12/01/2012
`
`Jaurigue, Janet
`15863 Ceres Ave
`Fontana, CA 92335
`UNITED STATES
`Goods/Services Affected by Opposition
`
`Class 025.
`All goods and services in the class are opposed, namely: beanies; belts; hooded sweat shirts;
`jackets; jeans; shirts; shorts; sweaters; T-shirts
`
`Grounds for Opposition
`
`Deceptiveness
`False suggestion of a connection
`Priority and likelihood of confusion
`Dilution
`Torres v. Cantine Torresella S.r.l.Fraud
`
`Trademark Act section 2(a)
`Trademark Act section 2(a)
`Trademark Act section 2(d)
`Trademark Act section 43(c)
`808 F.2d 46, 1 USPQ2d 1483 (Fed. Cir. 1986)
`
`

`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Application
`No.
`Registration Date
`
`85630591
`
`NONE
`
`Word Mark
`Design Mark
`
`OUTASIGHT
`
`Application Date
`
`05/21/2012
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 025. First use: First Use: 2011/01/08 First Use In Commerce: 2011/01/08
`Clothing, namely, shirts, T-shirts, jackets, jerseys, hoodies, wristbands, visors,
`headwear, hats, caps, nightshirts
`
`U.S. Application
`No.
`Registration Date
`
`85978027
`
`NONE
`
`Word Mark
`Design Mark
`
`OUTASIGHT
`
`Application Date
`
`05/21/2012
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 016. First use: First Use: 2011/01/08 First Use In Commerce: 2011/01/08
`Printed matter, paper and stationary products, namely, posters, stickers, bumper
`stickers, postcards, decals and concert souvenir programs
`Class 041. First use: First Use: 2004/06/01 First Use In Commerce: 2004/06/01
`Entertainment services, namely, live performances, personal appearances as
`well as live television and radio performances by a musical artist; entertainment
`services, namely, providing a website that features subject matters related to
`music; music publishing services
`
`

`
`Attachments
`
`85630591#TMSN.jpeg ( 1 page )( bytes )
`85978027#TMSN.jpeg ( 1 page )( bytes )
`notice of opp ou final.pdf ( 6 pages )(219003 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
`
`/Jeffrey T. Jones/
`Jeffrey T. Jones
`11/30/2012
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In re Application No.:
`For the Mark:
`
`85613605
`OUTASIGHT CLOTHING
`
`Published:
`
`October 2, 2012
`
`__-_...____——_————_—____———-___-_—_____—_____-___—_——.._—.-
`
`RICHARD ANDREW CONTE
`
`OPPOSER
`
`V.
`
`ALEXIS REINOSO AND
`
`JANET JAURIQUE
`
`APPLICANT
`
`:[-I-***-)5-3!"?!-=6
`
`OPPOSITION No.
`
`NOTICE OF OPPOSITION
`
`Richard Andrew Conte, an individual, with an address of, C/o Jeffrey T. Jones, Esq., 108 North
`Elm Street, Greensboro, NC 27401 (hereinafter “Opposer”), believes that he will be damaged by
`registration of the mark OUTASIGHT CLOTHING shown in Application Serial No. 85613605 in
`International Class 25 and hereby opposes the same.
`
`This Notice of Opposition has been timely filed, Opposer having been granted a thirty-day
`extension of time in which to oppose, which expires on December 1, 2012.
`
`As grounds for opposition, it is alleged that:
`
`1. Applicant is the record owner of the following U.S. Trademark Application for the Mark
`OUTASIGHT CLOTHING, which was filed on May 1, 2012 on the basis of Applicant’s
`intent to use the Mark on its goods in interstate commerce in International Class 25 for
`be-anies; belts; hooded sweat shirts; jackets; jeans; shirts; shorts; sweaters; T-shirts.
`
`2. The Opposer, Richard Andrew Conte, is a well known professional singer, songwriter and
`performing artist. Since as early as June l, 2004, Opposer has been performing concerts
`under the professional name and Mark OUTASIGHT and has become well known
`throughout the world as OUTASIGHT, and such use has been continuous and ongoing,
`grantir1g Opposer exclusive common law ownership rights to the Mark.
`
`3. Opposer is the owner of all right title and interest in and to the following federal trademark
`applications:
`
`i. United States Trademark Application No. 85978027 filed November 9, 2012 as a child
`application stennning from the original United States Application No. 85630591
`
`

`
`filed May 21, 2012, for the trade and service-mark OUTASIGHT, covering
`Entertainment services, namely live performances, personal appearances as well as
`live television and radio performances by a musical artist; entertainment services,
`namely, providing a website that features subject matters related to music; music
`publishing services in International Class 41, claiming a first use date in interstate
`commerce as early as June 1, 2004 and Printed matter, paper and stationary
`products, namely, posters, stickers, bumperstickers, postcards, decals and concert
`souvenir programs in International Class 16, claiming a first use date in interstate
`commerce as early as January 8, 2011.
`
`ii. United States Trademark Application No. 85630591, filed May 21, 2012, for the
`trademark OUTASIGHT, covering Clothing, namely, shirts, T-shirts, jackets,
`jerseys, hoodies, wristbands, visors, headwear, hats, caps, nightshirts in International
`Class 25, claiming a first use date in interstate commerce as early as January 8,
`201 1.
`
`. Opposer has excelled at his profession and is simply known to all of his fans and to the
`world as his professional name, brand and pseudonym, OUTASIGHT, and enjoys an
`enviable reputation whereas his brand and recorded music serve as themes for valuable
`commercial products advertising and marketing campaigns.
`
`. Opposer has spent significant efforts and sums of money in the advertising, marketing,
`branding and promoting the sale in interstate commerce of his goods and services under the
`Mark.
`
`. Opposer has spent an enormous amount of money, energy and time in concert
`performances, radio interviews, personal appearances and media events in connection with
`the performance, marketing, promoting, branding and advertising of the goods and services
`under the OUTASIGHT Mark and as a result, a significant amount of Goodwill has
`attached to the Opposer’s Mark
`
`PRIORITY
`
`Opposer hereby incorporates by reference the allegations in Paragraphs 1 through 6 as if
`fully set forth herein.
`
`. Opposer owns common law rights in the Mark OUTASIGHT, having commenced
`commercial use of the Mark in US commerce much earlier than the May 1, 2012 intent to
`use application date of Applicant.
`
`. Opposer owns common law rights in the Opposer’s Mark in connection with the goods
`listed in Application No. 85630591, having commenced commercial use of the Opposer’s
`Mark in US commerce on such goods in the ordinary course ofbusiness earlier than
`Applicants intent to use application date of May 1, 2012, and such use is continuous and
`ongoing.
`
`

`
`10. Opposer, long prior to Applicant’s intent to use filing date of May 1, 2012 for its
`application for registration, adopted and began to use, and has continuously used, and is
`currently using the Mark OUTASIGHT not only as his identity and a performing name for
`his services, but also as a Mark for various of his goods and Opposer has been expanding
`his use of his Mark for his goods.
`
`ll.
`
`12.
`
`13.
`
`14.
`
`15.
`
`16.
`
`17.
`
`18.
`
`19.
`
`20.
`
`21.
`
`Opposer has significant common law interest and rights in and to OUTASIGHT as a
`service-mark for perfonning which has been in use by Opposer in interstate commerce since
`at least as early as 2004.
`
`Opposer is the prior user and owner of the Mark.
`
`Opposer, for many years and since long prior to any date of first use upon which Applicant
`can rely, has adopted and continued using Outasight as a service-mark for entertaining and
`performing.
`
`Opposer has superior rights in and to the Outasight Mark because his usage of the Mark pre-
`dates Applicant’s application date for its intent to use registration.
`
`Opposer’s 1ights in his Mark are prior and superior to any rights that Applicant may claim
`in Applicant’s Mark.
`
`It has long been established that trade or service-mark rights are acquired by appropriation
`and use, not by registration and that ownership rights flow from prior use.
`
`In a priority dispute between a senior common law user of a Mark and a second in time
`intent to use applicant, the senior common law user must prevail according to 15 U.S.C.A.
`§2(a); therefore, prior non registered common law rights are superior in priority to an earlier
`filed intent to use application for registration.
`
`Priority should be awarded to the common law user such as Opposer, who used the Mark
`prior to Applicant’s intent to use application for registration.
`
`LIKELIHOOD OF CONFUSION
`
`Opposer hereby incorporates by reference the allegations in Paragraphs 1 through 18 as if
`fully set forth herein.
`
`As a result of Opposer’s aforementioned uses of Opposer’s Mark, the Mark possesses a
`high degree of distinctiveness and is well known and recognized as identifying the
`individual perfonner, as well as goods and services which have their source and origin
`solely with Opposer and as distinguishing the person and such goods and services from like
`or similar acts, goods and services of others such as Applicant.
`
`Use and registration of the Mark OUTASIGHT CLOTHING by Applicant in connection
`with clothing products is likely to cause confusion, cause mistake or deceive consumers,
`
`

`
`and cause them to believe that the goods offered by Applicant emanate from, or are
`sponsored by, endorsed by or otherwise connected with Opposer, in violation of section
`2(d) of the Lanham Act, 15 U.S.C.A. §1052(d).
`
`In view of the identical nature of Applicant’s Mark to Opposer’s Mark, and in further view
`of the virtual identity of the goods with which the respective Marks are used, the
`registration and continued use of Applicant’s Mark with goods specified in its application is
`likely to cause confusion, mistake, and deception within the meaning of section 2(d) of the
`Trademark Act 15 U.S.C.A. §l052(d) and will result in irreparable damage and injury to
`Opposer.
`
`The use and application of Applicant’s Mark is likely to cause confusion, or mistake or
`deception of purchasers as to the source of origin of the respective goods of Opposer and
`Applicant.
`
`The respective services and goods of Opposer and Applicant are closely related and would
`travel and be promoted through the same channels of trade for sale to, and use by the same
`class of purchasers.
`
`If applicant is granted the registration herein opposed, it would thereby obtain at least a
`prima facie exclusive right to the use of the Mark. Such registration would be a source of
`damage and injury to the Opposer. Applicant’s Mark is identical and therefore confusingly
`similar to Opposer’s Mark in sound, appearance, meaning and commercial impression.
`
`FALSE DESIGNATION OF ORIGIN
`
`Opposer hereby incorporates by reference the allegations in Paragraphs 1 through 25 as if
`fully set forth herein.
`
`22.
`
`23.
`
`24.
`
`25.
`
`26.
`
`27.
`
`The designation OUTASIGHT CLOTHING is confusingly similar and identical to
`' Opposer’s OUTASIGHT Mark, as Applicant is not claiming any exclusive rights to
`clothing, so that registration of the designation would be inconsistent with and damaging to
`Opposer’s exclusive and prior common law rights in its applied for Mark in connection with
`products and services with which it is used.
`
`28.
`
`29.
`
`30.
`
`The Mark proposed for registration, OUTASIGHT CLOTHING, is identical, and therefore
`confusingly similar to Opposers name and would be taken by the public as an endorsement
`by Opposer of Applicants goods bearing the Mark. Further, any defect, objection or fault
`found with Applicant’s products marketed under its Mark would necessarily reflect upon
`and seriously injure the personal reputation of Opposer.
`
`Neither Applicant nor Applicant’s products are endorsed, sponsored by, or affiliated with
`Opposer. Applicant’s Mark falsely suggests a connection with Opposer as an entertainer
`and celebrity.
`
`Applicant’s Mark is deceptive as defined in section 2 of the federal Trademark Act, 15
`U.S.C.A. § lO52(a), and should be properly refitsed registration.
`
`

`
`31.
`
`32.
`
`33.
`
`34.
`
`35.
`
`36.
`
`37.
`
`38.
`
`39.
`
`40.
`
`The Mark proposed for registration by Applicant namely OUTASIGHT CLOTHING
`disparages and/or falsely suggests a connection with Opposer himself and will bring
`Opposer into contempt or disrepute in the minds of the public.
`
`Applicant’s commercial use of the Mark on its goods would interfere with Opposer’s
`valuable property right to commercially exploit his own name and would amount to a
`conversion of such rights from which Applicant would reap financial profit.
`
`Applicant’s Mark is calculated and is likely to cause irreparable loss, injury and damage to
`Opposer’s brand, image, reputation, business and to the Goodwill thereto as symbolized and
`recognized by its Mark.
`
`Applicant’s Mark is a misappropriation of Opposer’s Mark and registration of said Mark by
`Applicant will permit Applicant to trade on the goodwill of Opposer’s fame and Mark to the
`detriment and damage to Opposer.
`
`Applicant's Mark so closely resembles Opposer’s Mark that the registration and continued
`use of Applicant’s Mark will falsely suggest a connection with Opposer in Violation of
`section 2(a) of the Trademark Act 15 U.S.C.A.§ l052(a) and will result in irreparable
`damage and injury to Opposer.
`
`Opposer believes that Applicant submitted a false and fiaudulent declaration to the USPTO
`in a clear effort to deceive the trademark examiner by declaring no other entity has rights or
`claims rights to the Mark. Applicant also claimed that no other entity has the right to use the
`Mark in identical form or near resemblance, in the Declaration that Applicant signed on
`May 1, 2012 while knowing or clearly having reason to know that Opposer had rights and
`claimed rights to the Mark.
`
`DILUTION
`
`Opposer hereby incorporates by reference the allegations in Paragraphs 1 through 36 as if
`fully set forth herein.
`
`Opposer’s Mark is not only well known, but is also famous as defined in section 43(c) of
`the federal Trademark Act, 15 U.S.C.A. §1 125(c)(1).
`
`The registration of Applicant’s Mark is likely to injure Opposer’s reputation and tarnish and
`dilute the distinctive quality of Opposer’s famous trade and performing name and Mark
`under section 43 (c) of the federal Trademark Act.
`
`Opposer will be damaged by the registration of Applicant’s Mark by reason of the
`foregoing, and because such registration will support and assist applicant in causing
`confusion and misleading consumers by providing a color of exclusive statutory rights in
`Applicants Mark in violation and derogation of Opposer’s prior superior rights.
`
`

`
`WHEREFORE the Opposer prays that the application Serial No. 85613605 be rejected and that the
`Mark therein sought for the goods herein specified in US Class 25 be denied and refused.
`
`Dated: November 30, 2012
`
`
`
`«
`
`The Gray Build
`108 North Elm sy et
`Greensboro, NC 27401
`
`i
`
`(336) 691-9200
`Jeffre (D
`a 'olmsonlaw.com
`
`NC Bar 39141
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that the foregoing Notice of Opposition is being submitted electronically
`through the Trademark Trial and Appeal Board’s ESSTA system and that a copy of the foregoing
`Notice of Opposition was sent via First Class Certified mail, Return Receipt Requested, postage pre-
`paid, on this 30m day ofNovember, 2012 to Alex Reinoso and Janet Jaurique at the address on their
`intent to use application for registration as follows.
`
`Alex Reinoso and
`
`Jenet Jaurique
`15863 Ceres Avenue
`
`Fontana, California 92335