Trademark Trial and Appeal Board Electronic Filing System. htfQJ/estta.usQto.gov
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`Notice is hereby given that the following party opposes registration of the indicated application.
`
`Notice of Opposition
`
`Opposer Information
`
`Name
`Granted to Date
`
`AIRLIE CREATIONS, LLC
`09/18/2013
`
`of previous
`extension
`
`Address
`
`600 HOPSCOTCH CT
`WILMINGTON, NC 28411
`UNITED STATES
`
`Thomas G. Varnum
`
`Brooks, Pierce, McLendon, Humphrey & Leonard, LLP
`1213 Culbreth Drive
`
`Wilmington, NC 28405
`UNITED STATES
`
`tvarnum@brookspierce.com Phone:3362713161
`UNITED STATES
`clothing
`
`Applicant Information
`
`Application No
`
`85802212
`
`Publication date
`
`05/21/2013
`
`Opposition Filing
`Date
`
`09/18/2013
`
`Opposition
`Period Ends
`
`09/18/2013
`
`Applicant
`
`The Home T., LLC
`3489 ELMWOOD AVE
`ROCHESTER, NY 14610
`
`Goods/Services Affected by Opposition
`
`Class 025.
`
`All goods and services in the class are opposed, namely: T-shirts and sweatshirts; baby clothing,
`namely, one piece garments for infants and toddlers
`Class 035.
`
`All goods and services in the class are opposed, namely: on-line retail store services featuring
`
`Grounds for Opposition
`
`False suggestion of a connection
`
`Trademark Act section 2(a)
`
`Priority and likelihood of confusion
`
`Trademark Act section 2(d) Mere ornamentation; failure to function as a
`
`mark.
`
`Mark Cited by Opposer as Basis for Opposition
`
`U.S. Applicationl Application Date
`
`Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA560019
`ESTTA Tracking number:
`09/18/2013
`
`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
`
`AIRLIE CREATIONS, LLC
`09/18/2013
`
`600 HOPSCOTCH CT
`WILMINGTON, NC 28411
`UNITED STATES
`
`Attorney
`information
`
`Thomas G. Varnum
`Brooks, Pierce, McLendon, Humphrey & Leonard, LLP
`1213 Culbreth Drive
`Wilmington, NC 28405
`UNITED STATES
`tvarnum@brookspierce.com Phone:3362713161
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`85802212
`09/18/2013
`
`Publication date
`Opposition
`Period Ends
`
`05/21/2013
`09/18/2013
`
`The Home T., LLC
`3489 ELMWOOD AVE
`ROCHESTER, NY 14610
`UNITED STATES
`Goods/Services Affected by Opposition
`
`Class 025.
`All goods and services in the class are opposed, namely: T-shirts and sweatshirts; baby clothing,
`namely, one piece garments for infants and toddlers
`Class 035.
`All goods and services in the class are opposed, namely: on-line retail store services featuring
`clothing
`
`Grounds for Opposition
`
`False suggestion of a connection
`Priority and likelihood of confusion
`Other
`
`Trademark Act section 2(a)
`Trademark Act section 2(d)
`Mere ornamentation; failure to function as a
`mark.
`
`Mark Cited by Opposer as Basis for Opposition
`
`U.S. Application/
`
`NONE
`
`Application Date
`
`NONE
`
`

`
`F*e9iStrati°" N°- —
`F*e9iS"ati°" Date
`Word Mark
`The word "home." within an image of the state of Colorado.
`
`
`
`Goods/Services
`
`Tee shirts and other clothing items, as well as vinyl sticker goods.
`
`Related
`Proceedings
`
`Proceeding No. 91212463, Filed on 9-13-13 by Zeke Vantreese.
`
`The Home T. Notice of Opposition - F|NAL.pdf(168409 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
`
`/Thomas G. Varnum/
`Thomas G. Varnum
`
`09/18/2013
`
`Registration No.
`Registration Date
`Word Mark
`Goods/Services
`
`Related
`Proceedings
`
`NONE
`The word "home." within an image of the state of Colorado.
`Tee shirts and other clothing items, as well as vinyl sticker goods.
`
`Proceeding No. 91212463, Filed on 9-13-13 by Zeke Vantreese.
`
`Attachments
`
`The Home T. Notice of Opposition - FINAL.pdf(168409 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
`
`/Thomas G. Varnum/
`Thomas G. Varnum
`09/18/2013
`
`

`
`
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In re Trademark Application Serial No. 85802212
`For the Mark: HOME.
`Filed: December 13, 2012
`Published for Opposition: May 21, 2013
`
`AIRLIE CREATIONS, LLC,
`
`
`
`
`
`
`Opposition No. ____________
`
`
`
`Opposer,
`
`
`
`v.
`
`
`THE HOME T., LLC,
`
`
`Applicant.
`
`
`Commissioner for Trademarks
`Attn: Trademark Trial and Appeal Board
`P.O. Box 1451
`Alexandria, VA 22313-1451
`Transmitted via ESTTA
`
`
`NOTICE OF OPPOSITION
`
`Opposer Airlie Creations, LLC (“Opposer”) hereby opposes registration of the word “home.”
`
`
`
`depicted inside an image of the state of Colorado (the “Design”), as sought in Application Serial No.
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`85802212 (the “Application”), filed by The Home T., LLC (“Applicant”) on December 13, 2012.
`
`Having been granted extensions of time to oppose the Application up to and including September 18,
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`2013, Opposer now opposes the Application, by and through undersigned counsel, pursuant to 15
`
`U.S.C. § 1063, on grounds of prior use, likelihood of confusion, false suggestion of a connection,
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`and mere ornamentation.
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`As set forth in more detail below, Opposer believes it will be damaged by the registration of
`
`the Design as a mark because the Design is identical, or at a minimum confusingly similar, to a
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`“home.” design Opposer used on t-shirts and other items well before: (i) the filing date of the intent-
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`1
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`to-use Application, (ii) Applicant’s first use of the Design in commerce, and (iii) Applicant’s first use
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`of the Design anywhere. Further, Applicant does not use the Design as a source-identifying mark—
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`rather, Applicant uses the Design merely as an ornamental design in a series of other similar t-shirt
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`designs. Upon information and belief, Applicant tried and failed to register the applied-for mark
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`(along with similar marks for each of the 50 states) as a design with the U.S. Copyright Office, but
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`such registration was rejected. Now, as an end-run around copyright law’s protection of the public
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`domain, Applicant is seeking trademark registration to manufacture exclusive rights to an ornamental
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`design Applicant did not create.
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`As more specific grounds for opposition, Opposer alleges and says the following:
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`1. Opposer is a North Carolina limited liability company with a principal place of business in
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`Wilmington, North Carolina.
`
`2. The Application recites that the Applicant is The Home T., LLC, a New York limited
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`liability company with an address in Rochester, New York.
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`OPPOSER’S PRIOR USE, LIKELIHOOD OF CONFUSION,
`AND FALSE SUGGESTION OF A CONNECTION
`Sections 2(a) and 2(d) of the Lanham Act
`
`3. The allegations of all preceding paragraphs are re-alleged and incorporated herein by
`
`reference.
`
`4. Even were Applicant to use the Design in a source-identifying manner (such is not the
`
`case—see infra), Opposer will be damaged by the registration because Opposer began
`
`using the Design (or, at least, a design confusingly similar thereto) in commerce well
`
`before Applicant applied to register the Design or began using the Design.
`
`5. Applicant filed the intent-to-use Application challenged herein on December 13, 2012,
`
`seeking registration the Design as a mark in connection with t-shirts and other clothing
`
`items in Class 025, and on-line retail store services featuring clothing in Class 035.
`
`
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`6. The Design is phonetically, aesthetically, and visually identical to and/or confusingly
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`similar to a design (used in connection with t-shirts, and other clothing and non-clothing
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`items) that Opposer marketed, sold, and distributed in commerce throughout the entire
`
`United States prior to the filing date of the Application or Applicant’s first use of the
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`Design.
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`7. Upon information and belief, Opposer’s customers have actually been, and will continue to
`
`be, deceived as to the origin of Applicant’s clothing and online retail store as a result of
`
`Applicant’s junior use of the Design.
`
`8. Opposer used a design identical to the Design and otherwise had rights in the Design prior
`
`to the filing date of the Application.
`
`9. Opposer used a design identical to the Design and otherwise had rights in the Design prior
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`Applicant’s first use of the Design, both in commerce or anywhere.
`
`10. As an example, Opposer began actively marketing, distributing, and selling vinyl decals
`
`with a design identical to the Design on-line in international and interstate commerce by at
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`least as early as June 2012.
`
`11. As another example, Opposer began actively marketing, distributing, and selling t-shirts
`
`with a design identical to the Design on-line in international and interstate commerce by at
`
`least as early as September 2012.
`
`12. There is no genuine question of priority in this proceeding. Opposer used a design
`
`identical to the Design for many months prior to Applicant’s filing of its “intent-to-use”
`
`Application and prior to any actual use of the Design by Applicant.
`
`13. Opposer’s prior use of the Design extended throughout the entire United States and
`
`beyond.
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`14. Opposer has not granted Applicant any form of permission, authorization, or license in
`
`connection with the Design.
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`3
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`15. Opposer has built up valuable goodwill in its design—to which the Design is identical or
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`confusingly similar—as a result of the extensive use, sale and promotion of its products
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`and services offered in connection with that design.
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`16. Upon information and belief, prior to the filing of the Application, Applicant was aware of
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`Opposer’s goods and services, including Opposer’s prior use of the Design on t-shirts and
`
`other clothing, and Applicant nevertheless opted to seek registration of the Design.
`
`17. Among other factors, substantial similarities and overlaps exist between: (i) the Design
`
`and the identical design that Opposer previously used throughout the United States and has
`
`not abandoned; (ii) the products and services offered by Opposer and Applicant,
`
`respectively; and (iii) the respective trade channels of the parties’ goods and services.
`
`18. The Design so resembles Opposer’s prior design as to be likely, when used on or in
`
`connection with Applicant’s goods and services, as identified in the Application, to cause
`
`confusion, to cause mistake, and/or to deceive. Additionally, any future use of the Design
`
`as Applicant describes in the Application would falsely suggest a connection between
`
`Applicant and Opposer.
`
`19. The Design is therefore unregistrable under Section 2(d) of the Lanham Act, 15 U.S.C. §
`
`1052(d). The Application should also be denied due to violation of Section 2(a) of the
`
`Lanham Act, 15 U.S.C. § 1052(a).
`
`MERELY ORNAMENTATION
`Sections 1, 2 and 45 of the Lanham Act
`(in the alternative)
`
`20. The allegations of all preceding paragraphs are re-alleged and incorporated herein by
`
`reference.
`
`21. Upon information and belief, Applicant’s intended use of the Design (consistent with
`
`Applicant’s use of the Design subsequent to the filing of the Application) is merely as a
`
`decorative or ornamental feature of the Applicant’s clothing and does not function as a
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`4
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`mark used to identify and distinguish applicant’s clothing or services from those of others,
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`or to indicate the source of the clothing and services.
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`22. Accordingly, the Application should be denied registration under Sections 1, 2 and 45 of
`
`the Lanham Act, 15 U.S.C. §§ 1051, 1052 & 1127.
`
`23. Upon information and belief, Applicant’s intended use of the Design will fail to function as
`
`a mark and/or be ornamental due to Applicant’s intention to use it prominently on the
`
`clothing as ornamentation rather than as a mark or indicia of source
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`24. The Design (“home.” written inside the boundary of Colorado) is merely one of 50
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`decorative and ornamental designs offered by the Applicant and is not used to identify the
`
`Applicant as the source of the clothing.
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`25. The Design is located in large format, centered, and on the upper half of the clothing in a
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`position and manner not typically perceived by consumers as trademark use.
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`26. Upon information and belief, Applicant instead attempts to use the term “The Home T.”
`
`(which Applicant also seeks to register with the USPTO for the same goods and services)
`
`to identify the source of clothing and services offered by Applicant. For example, “The
`
`Home T.” is placed in small font underneath the word “Home.” in Applicant’s designs, and
`
`in a position and manner typically perceived by consumers as an identification of source.
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`27. Applicant markets, offers for sale, and distributes clothing including the Design and
`
`similarly decorative designs for each of the 50 states of the United States, which include
`
`the outline of each state with the word “home.” written inside, all in a common and
`
`unoriginal font.
`
`28. As Opposer is informed and believes, in or about October, 2012, Applicant applied for
`
`federal copyright registration of the Design, along with an entire series of similar designs
`
`including the outline of each of the 50 states with the word “home.” written inside, in a
`
`common and unoriginal font.
`
`5
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`29. As Opposer is further informed and believes, the United States Copyright Office denied the
`
`Applicant’s attempted registration stating that it did not satisfy the authorship and
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`originality requirements for registration (i.e. the designs were geographic areas with a
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`commonly used word written in a commonly used font, and therefore others must remain
`
`free to copy the design).
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`30.
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`In turn, by falsely representing that his use of the Design will be as a source-identifying
`
`mark, the Applicant now attempts to secure trademark registration of this ornamental
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`Design, all to circumvent Copyright law, which will not protect this unoriginal and now
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`fairly common Design.
`
`31. Opposer believes it will be damaged if the Mark is registered.
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`32.
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`In light of this likelihood of confusion and false suggestion of a connection, and due to
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`Opposer’s trademark priority, or for the alternate grounds of Applicant’s merely
`
`ornamental use of the Design, the Application should be denied, registration should be
`
`refused, and the Design ought to be deemed unregisterable.
`
`
`WHEREFORE, the Opposer believes it will be damaged if the Mark is registered and
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`
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`respectfully requests that this opposition be sustained, the Application be denied, registration of the
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`Design be refused, and the Design be deemed unregisterable.
`
`Please recognize as attorneys for the Opposer in this proceeding Thomas G. Varnum of the
`
`
`
`law firm Brooks, Pierce, McLendon, Humphrey & Leonard, L.L.P., 1213 Culbreth Drive,
`
`Wilmington, NC 28405. All correspondence and communications should be directed to Thomas G.
`
`Varnum at the address listed below.
`
`6
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`

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`
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`Respectfully submitted, this the 18th day of September, 2013, by:
`
`Opposer Airlie Creations, LLC, by and through its
`attorney:
`
`
`
`/ Thomas G. Varnum /
`Thomas G. Varnum
`N.C. State Bar No. 38567
`
`BROOKS, PIERCE, MCLENDON,
` HUMPHREY & LEONARD, L.L.P.
`1213 Culbreth Drive
`Wilmington, NC 28405
`Telephone: (336) 271-3161
`Fax: (336) 232-9065
`Email: tvarnum@brookspierce.com
`
`7
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`CERTIFICATE OF SERVICE
`
`I hereby certify that a true and complete copy of the foregoing Notice of Opposition has been
`
`served on the Applicant by mailing said copy on this day, via First Class Mail, postage prepaid, and
`
`addressed to:
`
`Stephen J. Huggins, Esq.
`Dentons US LLP
`P.O. BOX 061080 WACKER DRIVE STATION, WILLIS TOWER
`CHICAGO, IL 60606-1080
`Applicant attorney of record in the Office
`
`
`This is the 18th day of September, 2013.
`
`
`
`/ Thomas G. Varnum /
`Thomas G. Varnum
`N.C. State Bar No. 38567
`
`BROOKS, PIERCE, MCLENDON,
` HUMPHREY & LEONARD, L.L.P.
`1213 Culbreth Drive
`Wilmington, NC 28405
`Telephone: (336) 271-3161
`Fax: (336) 232-9065
`Email: tvarnum@brookspierce.com
`
`Attorney for the Opposer
`
`
`
`8