Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA566657
`ESTTA Tracking number:
`10/23/2013
`
`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
`10/23/2013
`
`600 HOPSCOTCH CT
`WILMINGTON, NC 28411
`UNITED STATES
`
`Correspondence
`information
`
`AIRLIE CREATIONS, LLC
`600 HOPSCOTCH CT
`WILMINGTON, NC 28411
`UNITED STATES
`tvarnum@brookspierce.com Phone:3362713161
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`85808321
`10/23/2013
`
`Publication date
`Opposition
`Period Ends
`
`06/25/2013
`10/23/2013
`
`Vantreese, Zeke
`1504 Rainbow Drive
`Greensboro, NC 27403
`UNITED STATES
`Goods/Services Affected by Opposition
`
`Class 025. First Use: 2011/12/01 First Use In Commerce: 2012/12/01
`All goods and services in the class are opposed, namely: Hats; Hooded sweat shirts; Sweat shirts; T-
`shirts
`
`Grounds for Opposition
`
`Torres v. Cantine Torresella S.r.l.Fraud
`Other
`
`808 F.2d 46, 1 USPQ2d 1483 (Fed. Cir. 1986)
`Mere ornamentation; failure to function as a
`mark; void ab initio.
`
`Attachments
`
`Notice of Opposition - Final.pdf(151209 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.
`
`
`ESTTA566657
`ESTTA Tracking number:
`10/23/2013
`
`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
`10/23/2013
`
`600 HOPSCOTCH CT
`WILMINGTON, NC 28411
`UNITED STATES
`
`Correspondence
`information
`
`AIRLIE CREATIONS, LLC
`600 HOPSCOTCH CT
`WILMINGTON, NC 28411
`UNITED STATES
`tvarnum@brookspierce.com Phone:3362713161
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`85808321
`10/23/2013
`
`Publication date
`Opposition
`Period Ends
`
`06/25/2013
`10/23/2013
`
`Vantreese, Zeke
`1504 Rainbow Drive
`Greensboro, NC 27403
`UNITED STATES
`Goods/Services Affected by Opposition
`
`Class 025. First Use: 2011/12/01 First Use In Commerce: 2012/12/01
`All goods and services in the class are opposed, namely: Hats; Hooded sweat shirts; Sweat shirts; T-
`shirts
`
`Grounds for Opposition
`
`Torres v. Cantine Torresella S.r.l.Fraud
`Other
`
`808 F.2d 46, 1 USPQ2d 1483 (Fed. Cir. 1986)
`Mere ornamentation; failure to function as a
`mark; void ab initio.
`
`Attachments
`
`Notice of Opposition - Final.pdf(151209 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/
`AIRLIE CREATIONS, LLC
`10/23/2013
`
`
`
`
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In re Trademark Application Serial No. 85808321
`For the Mark: HOME.
`Filed: December 24, 2012
`Published for Opposition: June 25, 2013
`
`AIRLIE CREATIONS, LLC,
`
`
`
`
`
`
`Opposition No. ____________
`
`
`
`Opposer,
`
`
`
`v.
`
`
`ZEKE VANTREESE,
`
`
`Applicant.
`
`
`Commissioner for Trademarks
`Attn: Trademark Trial and Appeal Board
`P.O. Box 1451
`Alexandria, VA 22313-1451
`Transmitted via ESTTA
`
`
`NOTICE OF OPPOSITION
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`Opposer Airlie Creations, LLC *ÐOpposerÑ+ hereby opposes registration of the word Ðhome0Ñ
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`
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`depicted inside an image of the state of North Carolina *vjg"ÐDesignÑ+, as sought in Application
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`Serial No. 85808321 *vjg"ÐApplicationÑ+."hkngf"d{"Zeke Vantreese *ÐApplicantÑ+"qp December 24,
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`2012. Having been granted an extension of time to oppose the Application up to and including
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`October 23, 2013, Opposer now opposes the Application, by and through undersigned counsel,
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`pursuant to 15 U.S.C. § 1063, on grounds of mere ornamentation, fraud on the USPTO, and that the
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`Application is void ab initio.
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`As set forth in more detail below, Opposer believes it will be damaged by the registration of
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`the Design as a mark because registration of the Design may negatively affect well-established public
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`domain protections that apply to the Design. Applicant does not use the Design as a source-
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`1
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`identifying markÏrather, Applicant uses the Design merely as an ornamental design in a series of
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`other similar t-shirt designs. Upon information and belief, Applicant attempted to register the
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`Design as a copyright-protected design with the U.S. Copyright Office, but such registration was
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`refused (because of, for example, insufficient originality). Now, as an end-run around copyright
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`ncyÓu"rtqvgevkqp"qh"vjg"rwdnke"fomain, Applicant is seeking trademark registration to manufacture
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`exclusive rights to an ornamental design that copyright law clearly places in the public domain.
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`Moreover, the USPTO initially refused registration of the Design precisely for the principles
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`discussed above: the Design is merely ornamentation which fails to function as a mark. However, in
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`a calculated effort to citewoxgpv"vjg"WURVQÓu"kpkvkcn"tghwucn (issued on April 6, 2013), Opposer is
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`informed and believes that Applicant committed fraud on the USPTO. As further explained below,
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`Applicant submitted specimen showing the Design on a tag that, upon information and belief,
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`Applicant does not in fact use and did not use when the §1(a) Application was filed. Further,
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`Opposer is informed and believes that Applicant knowingly submitted a false declaration, stating that
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`the contrived specimen was in use at the time the Application was filed. As such, Applicant has
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`committed fraud on the USPTO and the Application is void ab initio.
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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.
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`2. The Application recites that the Applicant is Zeke Vantreese, a resident of Greensboro,
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`North Carolina.
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`3. Among other things, Opposer sells a variety of t-shirts featuring aesthetic designs
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`composed of the word Ðhome.Ñ contained within and overlying the image of a state, and
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`has done so since before the Application was filed.
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`2
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`MERELY ORNAMENTATION
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`4. The allegations of all preceding paragraphs are re-alleged and incorporated herein by
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`reference.
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`5. Wrqp"kphqtocvkqp"cpf"dgnkgh."CrrnkecpvÓu"wug"qh"vjg"Design is merely as a decorative or
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`ornamental feature of the ApplicantÓs clothing and does not function as a mark used to
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`kfgpvkh{"cpf"fkuvkpiwkuj"crrnkecpvÓu"enqvjkpi"or services from those of others, or to indicate
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`the source of the clothing and services.
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`6. Accordingly, the Application should be denied registration under Sections 1, 2 and 45 of
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`the Lanham Act, 15 U.S.C. §§ 1051, 1052 & 1127.
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`7. Wrqp"kphqtocvkqp"cpf"dgnkgh."CrrnkecpvÓu"wug"qh"vjg Design will fail to function as a mark
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`cpf1qt"dg"qtpcogpvcn"fwg"vq"CrrnkecpvÓu"kpvgpvkqp"vq"wug"kv"rtominently on the clothing as
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`ornamentation rather than as a mark or indicia of source.
`
`8. The Fgukip"*Ðjqog0Ñ"ytkvvgp"kpukfg"vjg"dqwpfct{"qh"North Carolina) is merely one of at
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`least 50 decorative and ornamental designs now offered by the Applicant, and is not used to
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`identify the Applicant as the source of the clothing.
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`9. 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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`10. Upon information and belief, Applicant instead attempts to use vjg"vgto"ÐThe Original
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`Home V0Ñ"qt"ÐJqogUvcvgCrrctgnÑ"to identify the source of clothing and services offered by
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`Applicant.
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`11. Applicant now markets, offers for sale, and distributes clothing including the Design and
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`similarly decorative designs for each of the 50 states of the United States, which include
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`vjg" qwvnkpg" qh" gcej" uvcvg"ykvj"vjg"yqtf"Ðhqog0Ñ"ytkvvgp"kpukfg, all in a common and
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`unoriginal font.
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`3
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`12. As Opposer is informed and believes that Applicant applied for federal copyright
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`registration of the Design.
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`13. As Opposer is further informed and believes, the United States Copyright Office denied the
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`CrrnkecpvÓu"cvvgorvgf"tgikuvtcvkqp"in a letter dated November 30, 2012, stating that it did
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`not satisfy the authorship and originality requirements for registration (i.e. the designs were
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`geographic areas with a commonly used word written in a commonly used font, and
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`therefore others must remain free to copy the design).
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`14.
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`In turn, by falsely representing that his use of the Design is as a source-identifying mark,
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`the Applicant now attempts to secure trademark registration of this ornamental Design, all
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`to circumvent Copyright law, which will not protect this unoriginal and now fairly common
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`Design.
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`15. Opposer believes it will be damaged if the Mark is registered. For example, Applicant has
`
`expressed the opinion that it may prevent Opposer from selling its line of Ðhome.Ñ t-shirts
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`because of ApplicantÓs alleged trademark rights in and to the aesthetic and ornamental
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`Design.
`
`16.
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`In light of CrrnkecpvÓu"ogtgly ornamental use of the Design, the Application should be
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`denied, registration should be refused, and the Design ought to be deemed unregisterable.
`
`FRAUD ON THE USPTO
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`17. The allegations of all preceding paragraphs are re-alleged and incorporated herein by
`
`reference.
`
`18. Upon information and belief, Applicant made a false representation to the USPTO
`
`regarding a material fact.
`
`19. Specifically, the examining attorney initially refused registration of the Design on mere
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`ornamentation grounds, because Applicant had only shown use of the Design as an
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`aesthetic design on t-shirtsÏnot as a source-identifying mark. After such refusal, upon
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`4
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`
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`information and belief, Applicant created and took a photograph of a tag bearing the
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`Design, when in fact Applicant did not then actually use that tag, does not now use that tag,
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`and did not use that tag at the time the §1(a) Application was filed, all in connection with
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`CrrnkecpvÓu"v-shirts.
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`20. Nonetheless, in a calculated and contrived attempt to overcome the initial refusal,
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`Crrnkecpv"uwdokvvgf"uwej"rjqvqitcrj"cpf"hcnugn{"fgenctgf"vjcv"ÐThe substitute (or new, if
`
`appropriate) specimen(s) was/were in use in commerce at least as early as the filing
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`date of the application.Ñ (Emphasis in original). Such a statement was false, Applicant
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`knew it was false, and the statement was material to the gzcokpkpi"cvvqtpg{Óu approval of
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`the Application.
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`21. Qvjgt"uvcvgogpvu"uyqtp"vq"d{"Crrnkecpv"kpenwfg<""Ðthe mark was in use in commerce on or
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`in connection with the goods and/or services listed in the application as of the application
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`filing date or as of the date of any submitted allegation of useÑ"cpf"Ðall statements in the
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`original application and this submission made on information and belief are believed to be
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`true0Ñ""Cu"qrrqugt"ku"kphqtogf"cpf"dgnkgxgu."vjg"hqtgiqkpi"tgrtgugpvcvkqpu"ygtg"hcnug0
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`22. Upon information and belief, the examining attorney would have refused registration of the
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`Design, as it initially did, but for the gzcokpkpi"cvvqtpg{Óu"relianeg"qp"CrrnkecpvÓu"hcnug"
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`representation.
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`23. Cu"uwej."tgikuvtcvkqp"qh"vjg"Fgukip"ujqwnf"dg"tghwugf"qp"ceeqwpv"qh"CrrnkecpvÓu"htcwf"qp"
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`the USPTO. See, e.g., Dctv"Uejyctv¦"KpvÓl Textileu"Nvf0"x0"Hgfgtcn"Vtcfg"EqooÓn, 129
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`USPQ 258 (CCPA 1961) (holding that Lanham Act imposes duty to not to
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`make knowingly inaccurate or knowingly misleading statements in verified declaration
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`forming part of application).
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`VOID AB INITIO
`
`5
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`24. The allegations of all preceding paragraphs are re-alleged and incorporated herein by
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`reference.
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`25. The Application is a § 1(a) registration application and, as such, is premised on actual use
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`of the applied-for mark (i.e., the Design) in commerce at the time the Application was filed.
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`26. As is more specifically alleged above, upon information and belief, Applicant did not use
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`the Design as a source-identifying mark in commerce at the time the Application was filed.
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`27. Dgecwug"qh"CrrnkecpvÓu"pqp-use of the Design as a trademark at the time the Application
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`ycu"hkngf."cpf"dgecwug"qh"CrrnkecpvÓu"htcwf"cu"jgtgkpdghqre alleged, the Application is void
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`ab initio and registration of the Design should be refused.
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`WHEREFORE, the Opposer believes it will be damaged if the Mark is registered and
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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.
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`
`
`Please recognize as attorneys for the Opposer in this proceeding Thomas G. Varnum of the
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`law firm Brooks, Pierce, McLendon, Humphrey & Leonard, L.L.P., 1213 Culbreth Drive,
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`Wilmington, NC 28405. All correspondence and communications should be directed to Thomas G.
`
`Varnum at the address listed below.
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`Respectfully submitted, this the 23rd day of October, 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
`
`6
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`7
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`CERTIFICATE OF SERVICE
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`I hereby certify that a true and complete copy of the foregoing Notice of Opposition has been
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`served on the Applicant by mailing said copy on this day, via First Class Mail, postage prepaid, and
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`addressed to:
`
`Kimberly Bullock Gatling
`Smith Moore Leatherwood LLP
`P.O. Box 21927
`Greensboro, NC 27420
`ApplicantÓu attorney of record in the Office
`
`
`This is the 23rd day of October, 2013.
`
`
`
`/ Thomas G. Varnum /
`Thomas G. Varnum
`N.C. State Bar No. 38567
`
`BROOKS, PIERCE, MCLENDON,
` HUMPHREY & LEONARD, L.L.P.
`115 N. 3rd Street, Suite 301
`Wilmington, NC 28401
`Telephone: (336) 271-3161
`Fax: (336) 232-9065
`Email: tvarnum@brookspierce.com
`
`Attorney for the Opposer
`
`
`
`8
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