Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA678742
`ESTTA Tracking number:
`06/17/2015
`
`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 ex-
`tension
`Address
`
`Glen Raven, Inc.
`06/17/2015
`
`1831 North Park Avenue
`Glen Raven, NC 27217
`UNITED STATES
`
`Attorney informa-
`tion
`
`Christopher Kelly
`Wiley Rein LLP
`1776 K Street, N.W. Trademark Administration
`Washington, DC 20006
`UNITED STATES
`ckelly@wileyrein.com Phone:202.719.7000
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`85804254
`06/17/2015
`
`Publication date
`Opposition Peri-
`od Ends
`
`02/17/2015
`06/17/2015
`
`Goodbrella, LLC
`2513 Jackson Drive
`Harker Heights, TX 76548
`UNITED STATES
`Goods/Services Affected by Opposition
`
`Class 006. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Holder in the nature of a portable, flexible
`arm composed primarily of metal with a pressure lock system having the ability to attach to most flat
`surfaces andused to hold various household-related appliances during use
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act section 2(d)
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`Registration Date
`
`3731230
`
`12/29/2009
`
`Word Mark
`
`SUNBRELLA
`
`Application Date
`
`06/02/2009
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`The mark consists of a stylized umbrella design and the word "SUNBRELLA", all
`in orange
`Class 024. First use: First Use: 2008/10/21 First Use In Commerce: 2008/10/21
`fabrics sold in the piece for use in producing awnings, sun and windscreens,
`tents, canopies, boat covers and tops, indoor and outdoor furniture, beach um-
`brellas, area rugs, draperies, sheers, windowtreatments
`
`U.S. Registration
`No.
`Registration Date
`
`3652524
`
`07/07/2009
`
`Word Mark
`Design Mark
`
`SUNBRELLA
`
`Application Date
`
`08/26/2008
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Description of
`Mark
`Goods/Services
`
`The mark consists of "SUNBRELLA" & Stylized Umbrella Design.
`
`Class 024. First use: First Use: 2008/10/21 First Use In Commerce: 2008/10/21
`fabrics sold in the piece for use in producing awnings, sun and windscreens,
`tents, canopies, boat covers and tops, indoor and outdoor furniture, beach um-
`brellas, area rugs, draperies, sheers, windowtreatments
`
`U.S. Registration
`No.
`Registration Date
`
`2966133
`
`07/12/2005
`
`Word Mark
`Design Mark
`
`SUNBRELLA "PLUS"
`
`Application Date
`
`06/09/2004
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 024. First use: First Use: 1991/06/00 First Use In Commerce: 1991/06/00
`fabrics sold in the piece for use in producing awnings, sun and windscreens,
`tents, canopies, boat covers and tops, indoor and outdoor furniture and beach
`umbrellas
`
`U.S. Registration
`No.
`Registration Date
`
`709110
`
`12/27/1960
`
`Application Date
`
`05/03/1960
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`Attachments
`
`SUNBRELLA
`
`NONE
`
`Class 024. First use: First Use: 1959/12/11 First Use In Commerce: 1959/12/11
`Fabrics for Awnings, Furniture, Handbags, and Sportswear
`
`77749650#TMSN.png( bytes )
`77556137#TMSN.png( bytes )
`76596398#TMSN.png( bytes )
`NOTICE OF OPPOSITION GOODBRELLA.pdf(335104 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
`
`/Christopher Kelly/
`Christopher Kelly
`06/17/2015
`
`

`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`IN RE APPLICATION SER. NO. 85/804,254
`
`FILED:
`MARK:
`Published:
`
`DECEMBER 17, 2012
`GOODBRELLA & Umbrella Design
`February 17, 2015
`
`NOTICE OF OPPOSITION
`
`Opp. N0.
`
`) )
`
`) )
`
`) )
`
`) )
`
`GLEN RAVEN, INC.
`
`Opposer,
`
`V-
`
`GOODBRELLA, LLC,
`
`)
`Applicant.
`___:_________?_)
`
`Glen Raven, Inc., a corporation organized under the laws of the state of North Carolina,
`
`with principal offices located at 1831 North Park Avenue, Glen Raven, North Carolina 27217
`
`(“Opposer”), hereby opposes registration of application Ser. No. 85/804,254 — GOODBRELLA
`
`& Umbrella Design for goods described as “holder in the nature of a portable, flexible arm
`
`composed primarily of metal with a pressure lock system having the ability to attach to most flat
`
`surfaces and used to hold various household-related appliances during use,” in International
`
`Class 6, filed December 17, 2012, by Goodbrella, LLC (“Applicant”) and published for
`
`opposition in the Official Gazette dated February 17, 2015.
`
`Opposer will be damaged if the opposed application matures to registration and puts forth
`
`the following grounds for opposition:
`
`l.
`
`Opposer is a leading manufacturer of fabrics sold in the piece for use in a diverse
`
`array of applications, including, without limitation, umbrellas, including, beach, patio and market
`
`umbrellas, awnings, canopies, screens, cabanas and tents and for other goods providing
`
`protection from the elements, including sun and rain.
`
`

`
`2.
`
`Opposer adopted and commenced use of its flagship trademark SUNBRELLA in
`
`1959 to identify a line of performance fabrics used to manufacture, among other things, the
`
`products identified in the preceding paragraph.
`
`3.
`
`abroad.
`
`Opposer’s SUNBRELLA brand fabrics are sold throughout the United States and
`T
`
`4.
`
`Consumers closely associate Opposer’s SUNBRELLA mark and fabrics with
`
`finished products such as umbrellas and other products used to shield users from sun, rain and
`
`other elements. As a result, consumers often base purchasing decisions on whether such
`
`products contain Opposer’s SUNBRELLA brand fabrics.
`
`5.
`
`Opposer extensively advertises and promotes its SUNBRELLA brand fabrics in
`
`major newspapers, magazines, trade journals and via the Internet. Opposer also distributes
`
`promotional brochures, pamphlets, promotional videos and podcasts and point—of-purchase
`
`materials. Opposer maintains an active Internet presence in support of its SUNBRELLA brand
`
`fabrics through its website found at <www.sunbrella.com> and such social networking sites as
`
`Facebook and Twitter.
`
`6.
`
`Opposer’s SUNBRELLA brand fabrics also receive significant gratuitous
`
`publicity and awards.
`
`7.
`
`Due to the renown of Opposer’s SUNBRELLA brand fabrics, manufacturers and
`
`distributors enthusiastically promote use of SUNBRELLA fabrics in their finished products.
`
`Opposer routinely supplies pass—through hang tags, labels and other materials bearing the
`
`SUNBRELLA trademark to its manufacturing customers to affix to their articles of finished
`
`merchandise containing SUNBRELLA fabric.
`
`

`
`8.
`
`Based on Opposer’s extensive, exclusive and continuous use of its SUNBRELLA
`
`trademark, SUNBRELLA is recognized by the consuming public as a designator of origin with
`
`respect to Opposer’s products.
`
`9.
`
`Opposer is the owner of all right, title and interest in the SUNBRELLA word
`
`mark and SUNBRELLA Logo collectively (“SUNBRELLA Mark”) and corresponding
`
`registrations issued by the U.S. Patent and Trademark Office, including, without limitation, the
`
`following:
`
`0 Reg. No. 3,731,230 — SUNBRELLA & Umbrella Logo Design for “fabrics sold
`in the piece for use in producing awnings, sun and windscreens, tents, canopies,
`boat covers and tops, indoor and outdoor furniture, beach umbrellas, area rugs,
`draperies, sheers, window treatments,” with a date of first use of 2008 and
`registered on the Principal Register December 29, 2009.
`
`0 Reg. No. 3,652,524 — SUNBRELLA & Umbrella Logo Design for “fabrics sold
`in the piece for use in producing awnings, sun and windscreens, tents, canopies,
`boat covers and tops, indoor and outdoor furniture, beach umbrellas, area rugs,
`draperies, sheers, window treatments,” with a date of first use of 2008 and
`registered on the Principal Register July 7, 2009.
`
`0 Reg. No. 2,966,133 — SUNBRELLA “PLUS” for “fabrics sold in the piece for
`use in producing awnings, sun and windscreens, tents, canopies, boat covers and
`tops, indoor and outdoor furniture and beach umbrellas,” with a date of first use of
`1991 and registered on the Principal Register July 12, 2005.
`
`0 Reg. No. 709,110 ~ SUNBRELLA in standard character form for “fabrics for
`awnings, furniture, handbags and sportswear,” with a date of first use of 1959 and
`registered on the Principal Register on December 27, 1960.
`
`Photocopies of the foregoing registrations are attached as Exhibit A.
`
`10.
`
`Opposer’s pleaded registrations are valid and subsisting in law and are statutorily
`
`incontestable as to all goods listed therein. Moreover, Opposer’s pleaded registrations are
`
`conclusive evidence of the validity of the registered marks, Opposer’s ownership thereof and of
`
`Opposer’s exclusive right to use the SUNBRELLA Mark in commerce on or in connection with
`
`the goods identified in the registration, as provided by Section 33(b) of the Lanham Act, 15
`
`U.S.C. § 1115(b).
`
`

`
`11.
`
`Opposer has invested significant sums advertising and promoting the sale of
`
`goods offered under the SUNBRELLA Mark. Based on the extensive, exclusive and continuous
`
`use of the SUNBRELLA Mark by Opposer, the relevant consuming public has come to
`
`recognize the SUNBRELLA Mark as being used by Opposer and to associate and identify the
`
`SUNBRELLA Mark with Opposer. Opposer has obtained and enjoys an exceedingly valuable
`
`reputation and goodwill symbolized by the SUNBRELLA Mark.
`
`13.
`
`On information and belief, Applicant intends to manufacture and distribute the
`
`goods identified in the opposed application under a logo featuring the word GOODBRELLA
`
`combined with a prominent umbrella design (collectively “Applicant’s Mark”).
`
`14.
`
`Applicant’s Mark closely resembles Opposer’s SUNBRELLA Mark in terms of
`
`appearance, sound, connotation and commercial impression as to be likely, when applied to
`
`Applicant’s goods, to cause confusion and mistake and to deceive.
`
`15.
`
`On information and belief, Applicant’s proposed goods are closely related to
`
`Opposer’s fabrics and many of the finished products featuring Opposer’s SUNBRELLA brand
`
`fabrics.
`
`16.
`
`Applicant’s Mark is confusingly similar to Opposer’s SUNBRELLA Mark so that
`
`registration of Applicant’s Mark would be inconsistent with and damaging to Opposer’s prior
`
`and exclusive rights in Opposer’s SUNBRELLA Mark as applied to the goods with which they
`
`are used.
`
`17.
`
`Opposer will be damaged by registration of Applicant’s Mark.
`
`WHEREFORE, Opposer prays that its opposition be sustained and that App1icant’s Mark
`
`be denied registration.
`
`Contemporaneously with the electronic filing of this Notice of Opposition, Opposer’s
`
`counsel authorizes filing fees in the amount of $300.00 to be debited from counsel’s Deposit
`
`

`
`Account No. 501129. If the amount received is insufficient and additional fees are required, the
`
`USPTO is authorized to charge Deposit Account No. 501129.
`
`Please recognize as attorneys for Opposer in this proceeding Christopher Kelly and
`
`Jennifer L. Elgin and the firm WILEY REIN LLP, 1776 K Street, N.W., Washington, D.C.
`
`20006.
`
`This opposition is being filed by the undersigned attorneys at law, duly authorized to
`
`represent Opposer in this proceeding, pursuant to Trademark Rule 2. l 01(b).
`
`Respectfully submitted,
`
`GLEN RAVEN, INC.
`
`By:
`
`/Christopher Kelly/
`Christopher Kelly
`Jennifer Elgin
`WILEY REIN LLP
`
`1776 K Street, N.W.
`Washington, D.C. 20006
`(202) 719-7000
`
`Attorneys for Opposer
`
`Dated: June 17, 2015
`
`

`
`EXHIBIT A
`
`

`
`.®“"tgfl Qtfitlzfi Of @1113
`?1}:Iu1'teh étates iBat1>.1It ant: flliralmntark ®ffI'1:2
`
`aK\
`
`smbrella
`
`Reg, No, 3,731,230 GLEN RAVEN, INC. (NORTH CAROLINA CORPORATION)
`Registered Dec. 29, 2009 1831 NORTH PARK AVENUE
`GI.,EN RAVEN, NC 27217
`
`Int. CL: 24 FOR: FABRICS SOLD IN THE PIECE FOR USE IN PRODUCING AWNINGS, SUN AND
`WINDSCREENS, TENTS, CANOP1ES,BOAT COVERSANDTOPS, INDOORAND OUTDOOR
`FURNITURE, BEACH UMBRF,I..LAS, AREA RUGS, ])RAPER1ES, SI~l}£}v1RS, WIND()W
`TRADEMARK TREATMENTS, IN CLASS 24 (U.S. CLS. 42 AND 50).
`PRINCIPAL REGISTER
`
`FIRST USE 10-21-2008; IN COMMERCE 10-21-2008.
`
`OWNER OF US. REG. Nos. 2,761,048, 3,118,723 AND OTHERS.
`
`TUE COLOR(S) ORANGE Is/ARE CLAIMED AS A FEATURE OF TIIE MARK.
`
`l'H.E MARK CONSISTS OF A STYLIZED UMBRELLA DESIGN AND TIIE WORD “SUN-
`BRELLA", ALL IN ORANGE
`
`SER. NO. 77-749,650, FILED 6-2-2009.
`
`SHANNON TWOHIG, EXAMINING ATTORNEY
`
`
`
`Dlrcclvr of the United Slam I*.1tcmm1d l1\ulc1n:u'k omcc
`
`

`
`Int. Cl.: 24
`
`Prior U.S. Cls.: 42 and 50
`
`United States Patent and Trademark Office
`
`Reg. No. 3,652,524
`Registered July 7, 2009
`
`TRADEMARK
`PRINCIPAL REGISTER
`
`AH!!-
`smbrella
`
`GLEN RAVEN, INC. (NORTH CAROLINA COR-
`PORATION)
`1831 NORTH PARK AVENUE
`GLEN RAVEN, NC 27217
`
`FOR: FABRICS SOLD IN THE PIECE FOR USE IN
`PRODUCING AWNINGS, SUN AND WIND-
`SCREENS, TENTS, CANOPIES, BOAT COVERS
`AND TOPS,
`INDOOR AND OUTDOOR FURNI-
`TURE, BEACH UMBRELLAS, AREA RUGS, DRAF-
`ERIES, SHEERS, WINDOW TREATMENTS,
`IN
`CLASS 24 (U.S. CLS. 42 AND 50).
`
`FIRST USE 10-21-2008; IN COMMERCE 10-21-2008.
`
`OWNER OF U.S. REG. NOS. 709,110, 2,028,355,
`AND OTHERS.
`
`THE MARK CONSISTS OF "SUNBRELLA" &
`STYLIZED UMBRELLA DESIGN.
`
`SN 77-556,137, FILED 8-26-2008.
`
`KATHLEEN LORENZO, EXAMINING ATTORNEY
`
`

`
`Int. Cl.: 24
`
`Prior U.S. C1s.: 42 and 50
`
`Reg. No. 2,966,133
`Registered July 12, 2005
`United States Patent and Trademark Office
`
`TRADEMARK
`PRINCIPAL REGISTER
`
`SUNBRELLA “PLUS”
`
`GLEN RAVEN, INC. (NORTH CAROLINA COR-
`PORATION)
`1831 NORTH PARK AVENUE
`GLEN RAVEN, NC 27217
`
`FOR: FABRICS SOLD IN THE PIECE FOR USE IN
`PRODUCING AWNINGS, SUN AND WIND-
`SCREENS, TENTS, CANOPIES, BOAT COVERS
`AND TOPS, INDOOR AND O UTDOOR FURNITURE
`AND BEACH UMBRELLAS , IN CLASS 24 (US. CLS.
`42 AND 50).
`
`THE MARK CONSISTS OF STANDARD CHAR-
`ACTERS WITHOUT CLAIM TO ANY PARTICULAR
`FONT, STYLE, SIZE, OR COLOR.
`
`OWNER OF U.S. REG. NOS. 1,815,959, 2,028,355
`AND OTHERS.
`
`SER. NO. 76-596,398, FILED 6-9-2004.
`
`FIRST USE 6-0-1991; IN COMMERCE 6-0-1991.
`
`VERNA BETH RIRIE, EXAMINING ATTORNEY
`
`

`
`'
`
`Umted States Patent Office Reeeeeeeee ,,ee§,e eeee
`
`09,110
`
`PRINCIPAL REGISTER
`
`Trademark
`
`ser. No. 96,329, filed May 3, 1960
`
`Glcn Raven Cotton Mills, Inc. (North Carolina corpora-
`tion)
`Glen Raven, N.C.
`
`For: FABRICS FOR AWNINGS, FURNITURE,
`HANDBAGS, AND SPORTSWEAR, in CLASS 42.
`First use Dec. 11, 1959; in commerce Dec. 11, I959.
`
`

`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a copy of NOTICE OF OPPOSITION by causing a copy
`
`thereof to be sent Via first-class mail, postage prepaid to the following address:
`
`Robert L. Villhard
`
`The Villhard Patent Group
`13492 Research Blvd., Suite 120-275
`
`Austin, Texas 78750
`
`This 17”‘ day of June 2015.