Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA513524
`ESTTA Tracking number:
`12/28/2012
`
`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
`Entity
`Address
`
`Undefeated, Inc.
`Corporation
`112-1/2 South La Brea Ave.
`Los Angeles, CA 90036
`UNITED STATES
`
`Citizenship
`
`California
`
`Attorney
`information
`
`John R. Sommer
`John R. Sommer, Attorney-at-Law
`17426 Daimler Street
`Irvine, CA 92614
`UNITED STATES
`sommer@stussy.com
`Applicant Information
`
`85661982
`12/28/2012
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`Publication date
`Opposition
`Period Ends
`AMBER SPORTING GOODS, INC.
`18075 WEST LITTLE YORK ROAD
`KATY, TX 77449
`UNITED STATES
`Goods/Services Affected by Opposition
`
`12/25/2012
`01/24/2013
`
`Class 009.
`All goods and services in the class are opposed, namely: Protective headgear for boxing
`Class 028.
`All goods and services in the class are opposed, namely: Training apparatus for boxing, namely,
`boxing gloves, training gloves, bag gloves, striking bags, speed bags, double end bags, foul
`protectors, and sparring and training mitts
`
`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.
`
`3525867
`
`Application Date
`
`04/14/2006
`
`
`ESTTA513524
`ESTTA Tracking number:
`12/28/2012
`
`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
`Entity
`Address
`
`Undefeated, Inc.
`Corporation
`112-1/2 South La Brea Ave.
`Los Angeles, CA 90036
`UNITED STATES
`
`Citizenship
`
`California
`
`Attorney
`information
`
`John R. Sommer
`John R. Sommer, Attorney-at-Law
`17426 Daimler Street
`Irvine, CA 92614
`UNITED STATES
`sommer@stussy.com
`Applicant Information
`
`85661982
`12/28/2012
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`Publication date
`Opposition
`Period Ends
`AMBER SPORTING GOODS, INC.
`18075 WEST LITTLE YORK ROAD
`KATY, TX 77449
`UNITED STATES
`Goods/Services Affected by Opposition
`
`12/25/2012
`01/24/2013
`
`Class 009.
`All goods and services in the class are opposed, namely: Protective headgear for boxing
`Class 028.
`All goods and services in the class are opposed, namely: Training apparatus for boxing, namely,
`boxing gloves, training gloves, bag gloves, striking bags, speed bags, double end bags, foul
`protectors, and sparring and training mitts
`
`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.
`
`3525867
`
`Application Date
`
`04/14/2006
`
`
`
`Registration Date
`
`10/28/2008
`
`Word Mark
`Design Mark
`
`UNDEFEATED
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 2002/11/00 First Use In Commerce: 2002/11/00
`Eye wear products, namely, sunglasses, eyeglass frames, protective goggles,
`eyeglass chains and eyeglass cases
`
`U.S. Registration
`No.
`Registration Date
`
`3367018
`
`01/08/2008
`
`Word Mark
`Design Mark
`
`UNDEFEATED
`
`Application Date
`
`04/14/2006
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 018. First use: First Use: 2004/01/00 First Use In Commerce: 2004/01/00
`All purpose sport bags; all purpose athletic bags; backpacks; luggage; shoe
`bags for travel
`
`U.S. Registration
`No.
`Registration Date
`
`3218703
`
`03/13/2007
`
`Word Mark
`
`UNDEFEATED
`
`Application Date
`
`02/02/2005
`
`Foreign Priority
`Date
`
`NONE
`
`
`
`Design Mark
`
`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
`
`3406295
`
`04/01/2008
`
`Word Mark
`Design Mark
`
`UNDEFEATED
`
`Application Date
`
`03/15/2007
`
`Foreign Priority
`Date
`
`NONE
`
`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
`
`U.S. Application
`No.
`Registration Date
`
`85735403
`
`NONE
`
`Word Mark
`
`UNDEFEATED
`
`Application Date
`
`09/21/2012
`
`Foreign Priority
`Date
`
`NONE
`
`
`
`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`Attachments
`
`NONE
`
`Class 028. First use: First Use: 2003/12/31 First Use In Commerce: 2003/12/31
`Action figures; Balls for games; Balls for sports; Basket balls; Collectable toy
`figures; Fantasy character toys; Footballs; Molded toy figures; Nets for ball
`games; Positionable toy figures; Skateboard decks; Toy figures
`
`78861795#TMSN.jpeg ( 1 page )( bytes )
`78861817#TMSN.jpeg ( 1 page )( bytes )
`78559308#TMSN.jpeg ( 1 page )( bytes )
`77132373#TMSN.jpeg ( 1 page )( bytes )
`85735403#TMSN.jpeg ( 1 page )( bytes )
`UD-Amber.opposition.pdf ( 6 pages )(156922 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
`12/28/2012
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the matter of Application Serial No. 85,/661982
`Published for Opposition in the OFFICIAL GAZETTE of December 25, 2612
`
`UNDEFEATED, INC,
`Opposer,
`
`v.
`
`AMBER SPORTING GOODS, INC,
`
`Applicant.
`
`Opposition No.:
`
`:
`
`NOTICE OF OPPOSITION
`
`Undefeated, Inc. (“Opposer”), a Caiifornia corporation having its principal place of
`
`business at 1124/2 South La Brea Avenue, Los Angeles, California 90036, believes it will be
`
`damaged by registration ofthe word mark UNDEFEATED and Device shown in Serial No.
`
`85/661982 in International Classes 09 and 28, filed by Amber Sporting Goods (“Applicant”), and
`
`hereby opposes the same.
`
`As grounds for this Opposition, it is alleged:
`
`I.
`
`On or about June 26, 2012, Applicant filed an intent to use application with the
`
`United States Patent and Trademark Office to register UNDEFEATED and Device mark
`
`(hereinafter “Applicanfs Mark”) for “Protective headgear for boxing” in International Class 09
`
`and for “training apparatus for boxing, namely, boxing gloves, training gloves, bag gloves,
`
`striking bags, speed bags, double end bags, foul protectors, and sparring and training mitt" in
`
`International Class 28. The application for Applieanfs Mark was published in the Official
`
`Gazette on December 25, 2012.
`
`
`
`2.
`
`Since at least as early‘ as 2002, Opposer has been using its UNDEFEATED Mark
`
`on a variety of goods and services as tisted on the registrations listed below, among others goods
`
`and services. Opposer is the owner of the registrations listed below:
`
`Class
`
`Rep. No.
`
`Reg. Date
`
`Goods (partial list:
`
`09
`18
`barrs”
`25”
`35
`
`3,525,867
`33367618
`
`3,218,703
`3,406,215
`
`10/28/2008
`01/01/2008
`
`'
`Eye wear products, etc.
`“All purpose sport bags; all purpose athletic
`
`03/; 3/07
`O4/OM08
`
`Clothing, footwear, headgear
`Retail store services featuring clothing,
`footwear, headgear
`
`Opposer is also the first user of UNDEFEATED on the following goods, as shown by pending
`
`appiicatioiisz
`
`Class
`
`App. No.
`
`First UseDate Goods (partial list)
`
`“Action figures; Balls for games; Balls for
`12/31/2003
`85/735,423
`28
`sports; Basket balls; Collectable toy figures; Fantasy character toys; Footballs; Molded toy
`figures; Nets for bail games; Positionabie toy figures; Skateboard decks; Toy figures.”
`
`’3
`3.
`
`There is no issue as to priority. Appiicanfs priority date for its intent-tonuse
`
`application is the tiling date, June 26, 2012. Oppose1"s first use dates are from the earlier
`
`2000’s, and registration dates are long before Applicants priority date, with one exception as
`
`noted above, and as to those goods, the first use date is iong before App.1icant’s priority date.
`
`4.
`
`Since ioug prior to Appiicanfs filing of the application for Applicanfs Mark (no
`
`use of Applicant’s Mark having been alleged by Applicant so'App1icant’s priority date is the
`
`tiling date), Opposer has made substantial and continuous use of the UNDEFEATED Mark in
`
`interstate, foreign, and intrastate corninerce 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, Opposer’s UNDEFEATED Mark has come to represent exceedingly
`
`valuable goodwill owned by Opposer.
`
`6.
`
`Opposer’s brand is focused on sports. It has manufactured and sold products
`
`specifically di1'ectecl towards boxing. Opposer believes that the natural and expected expansion
`
`of Oppose-:r’s brand will conllict with Applicanfs proposed goods and will result in the
`
`iil<el.ihood of confusion.
`
`7.
`
`The goods on which Opposer uses its UNDEFEATED Mark and the goods for
`
`which Applicant seeks to register Applicanfis Mark are closely related. Applicantfs Application,
`
`if registered. would allow its goods to be sold through the same channels of trade and to the same
`
`class ofpurcltasers as Opposer’s.
`
`8.
`
`Opposer’s UNDEFEATED Mark and Applican1:’s Mark are confusingly and
`
`substantially similar in that they have identical meaning. Applieanfs use of a device does not
`
`undo the substantial similarity.
`
`9.
`
`Use by Applicant of Applicantfs 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 Opposer’s
`
`UNDEFIEATEID Mark would he likely to buy Applicarifs 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 Appiicanfs products marketed
`
`"-.13
`
`
`
`ui1de7:Applieant’s Mark would necessarily reflect upon and seriously injure the reputation that
`
`Opposer has established for its products merchandised under Opp0Ser’s UNDEFEATED Mark.
`
`10.
`
`Applicant's Mark, if registered, will be deceptive, in Violation of Section 2(a).
`
`l 1.
`
`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).
`
`l2.
`
`Applicanfs Mark, if registered, will so resemble Opposer’s Marks registered on
`
`the Principal Register of the U.S. Patent & Trademark Office, and Opposerfs 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).
`
`13.
`
`Applicanfs Marlt, if registered, will dilute the distinctiveness of Opposefs Mark
`
`in violation of Section 43(c).
`
`14.
`
`Any use Applicant has made or may make of Applicant’s Mark, is and will be
`
`without Opposer’s consent or permission.
`
`WHEREFORE, registration by Applicant of the aforesaid Appiicanfis Mark for the
`
`aforesaid goods will be damaging to Opposer, and Oppose}: therefore requests that the
`
`Opposition be sustained.
`
` John R. Sommer
`
`17426 lsiaimler Street
`Irvine, California 92614
`
`(949) 752-5344
`Fax: (949) 752-5439
`
`
`
`SOMMER@STUSSY.COM
`
`Attorneys for Opposer Undefeated, Inc.
`
`LII
`
`
`
`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 maii, firs: class postage prepaid,
`
`addressed to:
`
`Roslyn Y. Bazzeiie, Esq.
`We}/cer Kaplan Pulaski & Zuber, PC
`11 Greenway Plaza, Suite 1400
`Houston, TX 77046-1 130
`
`with a courtesy copy by email to: iji;g_azze_|ie@y§1gg;g_9Mm.
`
`f
`‘i‘\..r"(f\\“"--—....
`X;
`Dated: December 28, 2012
`\,»_§’“‘a
`iohn R. Sommer
`‘~33;
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