Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA695847
`ESTTA Tracking number:
`09/15/2015
`
`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
`
`University of Kentucky
`09/16/2015
`
`338 Lexington Avenue Joe Craft Center
`Lexington, KY 40506
`UNITED STATES
`
`Attorney informa-
`tion
`
`Michael S. Hargis
`King & Schickli, PLLC
`247 North Broadway
`Lexington, KY 40507
`UNITED STATES
`michael@iplaw1.net Phone:8592520889
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`86478059
`09/15/2015
`
`Publication date
`Opposition Peri-
`od Ends
`
`05/19/2015
`09/16/2015
`
`Wood, Nancy
`13 Stevens Court
`Villa Hills, KY 41017
`UNITED STATES
`Goods/Services Affected by Opposition
`
`Class 025. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Clothing, namely, t-shirts, shirt, tops, sweat-
`shirts, jerseys, jackets, bottoms, pants, trousers, jeans, shorts, sweatpants, pajamas, dresses, head-
`wear, ties, scarves, bandanas, caps, baseball caps, skull caps
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act section 2(d)
`
`Mark Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`Registration Date
`
`2122847
`
`12/23/1997
`
`Word Mark
`Design Mark
`
`KENTUCKY WILDCATS
`
`Application Date
`
`04/05/1996
`
`Foreign Priority
`Date
`
`NONE
`
`
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 016. First use: First Use: 1950/12/31 First Use In Commerce: 1950/12/31
`art prints, athletic exhibition schedules, writing tablets, writing paper, stickers for
`windows, decals, note cards, bumper stickers, binders, self-adhesive note pads,
`paper bibs, and posters
`Class 025. First use: First Use: 1940/12/31 First Use In Commerce: 1940/12/31
`T-shirts, sport shirts, shorts, sweatshirts, mufflers, hats, jackets, athletic jerseys,
`sweatpants, and cloth bibs
`Class 028. First use: First Use: 1965/12/31 First Use In Commerce: 1965/12/31
`basketballs, basketball backboards, decorative wind socks, and board games
`
`Attachments
`
`Notice of Opposition.pdf(1280088 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
`
`/Michael S. Hargis/
`Michael S. Hargis
`09/15/2015
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of Registration Application Serial No. 86/478,059
`
`Filed December 1 1, 2014
`For the mark WILDTUCKY
`
`Published in the Oflicial Gazette on May 19, 2015
`
`UNIVERSITY OF KENTUCKY,
`
`Opposer,
`
`v.
`
`.
`:
`
`OPPOSITION NO.
`
`NANCY WOOD,
`
`Applicant.
`
`NOTICE OF OPPOSITION
`
`The University of Kentucky (“Opposer”), a Kentucky state university, having a place of
`
`business at 338 Lexington Avenue, Joe Craft Center, Lexington, Kentucky, 40506-0604, believes
`
`that it will be damaged by registration of the mark WILDTUCKY shown in Registration
`
`Application Serial No. 86/478,059 and hereby opposes the same. The fee under 37 CFR
`
`§2.6(a)(17) ($300/class X 1) is being paid by Deposit Account at the time of filing with ESTTA.
`
`As grounds for opposition, it is alleged that:
`
`1.
`
`Applicant Nancy Wood (“Applicant”) is an individual with an address at 13 Stevens
`
`Court, Villa Hills, Kentucky 41017.
`
`2.
`
`Applicant is the identified owner of the Registration Application Serial No. 86/478,059
`
`(the ‘“059 application”), filed on December 1 1, 2014, for the mark WILDTUCKY to
`
`identify: “Clothing, namely, t-shirts, shirt [sic], tops, sweatshirts, jerseys, jackets,
`
`bottoms, pants, trousers, jeans, shorts, sweatpants, pajamas, dresses, headwear, ties,
`
`
`
`scarves, bandanas, caps, baseball caps, skull caps” in international class 25.
`
`The University of Kentucky, Opposer, is a public university in Lexington, Kentucky.
`
`The University of Kentucky was founded in 1865 and is a flagship university in the
`
`Commonwealth of Kentucky. The University of Kentucky offers undergraduate and
`
`graduate educational and athletic programs.
`
`The University of Kentucky has used the mark KENTUCKY WILDCATS to identify its
`
`athletic teams, and numerous related goods and services since at least as early as 1996.
`
`On December 23, 1997, the U.S. Patent and Trademark Office issued U.S. Registration
`
`No. 2,122,847 (“the ‘847 registration”) (Exhibit A) for the mark KENTUCKY
`
`WILDCATS to identify “T-shirts, sport shirts, shorts, sweatshirts, mufflers, hats, jackets,
`
`athletic jerseys, sweatpants, and cloth bibs” in international class 25.
`
`The ‘847 registration issued well prior to Applicant’s December 1 1, 2014, filing date.
`
`Opposer is the owner of the ‘847 registration.
`
`Opposer has continuously used the mark KENTUCKY WILDCATS in interstate
`
`commerce to identify clothing since at least as early as 1996 and the mark remains in
`
`such use to identify clothing.
`
`10.
`
`The ‘847 registration is now inoontestable pursuant to 15 U.S.C. §1065, providing
`
`conclusive evidence of Opposer’s ownership of the mark and of its exclusive right to use
`
`the registered KENTUCKY WILDCATS mark in commerce.
`
`Count One
`
`Likelihood of Confusion, 15 U.S.C. §1052§d[
`
`11.
`
`12.
`
`Opposer repeats and realleges each and every allegation set forth in Paragraphs 1 through
`
`10.
`
`Opposer’s rights in the KENTUCKY WILDCATS mark predate Applicant’s filing date
`
`
`
`13.
`
`l4.
`
`15.
`
`16.
`
`17.
`
`18.
`
`19.
`
`20.
`
`for the ‘059 application.
`
`Applicanfs applied-for WILDTUCKY mark closely resembles Opposer’s KENTUCKY
`
`WILDCATS mark in sight, sound, connotation and commercial impression.
`
`Applicant’s applied—for WILDTUCKY mark is a combination of elements of the
`
`KENTUCKY WILDCATS mark including the terms “WILD” and “TUCKY.”
`
`When combined, the resulting term WILDTUCKY maintains a highly similar
`
`connotation to the connotation created by the KENTUCKY WILDCATS mark and the
`
`two marks are interchangeable and have identical meaning, i.e., they both refer to
`
`Opposer’s athletic teams.
`
`The similarity of the commercial impression of the WILDTUCKY and KENTUCKY
`
`WILDCATS marks is enhanced by the fact that the Opposer, University of Kentucky, is
`
`located in the Commonwealth of Kentucky.
`
`The applied—for Class 25 goods, are identical or highly related to the goods identified in
`
`Opposer’s ‘847 registration.
`
`Based on the similarity of the Applicant’s and University of Kentucky’s marks and the
`
`relatedness of Applicanfs applied—for goods and University of Kentucky’s KENTUCKY
`
`WILDCAT-branded goods, the public is likely to incorrectly believe that Applicant’s
`
`WILDTUCKY-branded Class 25 goods are connected to the University of Kentucky.
`
`This confusion will cause irreparable damage to the University of Kentucky.
`
`The Application should not be allowed under 15 U.S.C. § l052(d) because the applied—
`
`for mark resembles marks previously used in the United States by the University of
`
`Kentucky and is likely to cause confusion, mistake, or to deceive.
`
`
`
`WHEREFORE, Opposer requests that this opposition be sustained, that registration of the
`
`mark in the ‘059 application be denied, and that Opposer have such other and further relief as
`
`deemed appropriate.
`
`Dated: September 15, 2015
`
`By:
`
`Respectfully submitted,
`
`9;
`
`Mic ael S. Hargis
`KING & SCHICKLI, PLLC
`247 North Broadway
`Lexington, KY 40507—1058
`Telephone: (859) 252-0889
`Facsimile: (859) 252-0779
`
`Attorney for Opposer
`University of Kentucky
`
`
`
`EXHIBIT A
`
`
`
`Int. Cls.: 16, 25 and 28
`
`Prior U.S. CIs.: 2, 5, 22, 23, 29, 37, 38, 39 and 50
`
`United States Patent and Trademark Office
`
`Reg. No. 2,122,847
`Registered Dec. 23, 1997
`
`TRADEMARK
`PRINCIPAL REGISTER
`
`KENTUCKY WILDCATS
`
`UNIVERSITY OF KENTUCKY (KENTUCKY
`STATE UNIVERSITY)
`LEXINGTON, KY 40506009
`
`FOR: ART PRINTS. ATHLETIC EXHIBITION
`SCHEDULES, WRITING TABLETS, WRITING
`PAPER, STICKERS FOR WINDOWS, DECALS.
`NOTE CARDS, BUMPER STICKERS. BINDERS,
`SELF-ADHESIVE NOTE PADS, PAPER BIBS,
`AND POSTERS, IN CLASS I6 (U.S. CLS. 2. 5. 22,
`23. 29, 37, 38 AND 50).
`IN COMMERCE
`FIRST USE I2-31-1950;
`12-31-I930.
`FOR: T-SHIRTS, SPORT SHIRTS, SHORTS.
`SWEATSHIRTS. MUFFLERS, HATS. JACKETS.
`ATHLETIC JERSEYS. SWEATPANTS. AND
`CLOTH BIBS. IN CLASS 25 (US. CLS. 22 AND
`39).
`
`IN COMMERCE
`
`FIRST USE 12-31-1940;
`l2~3l—1940.
`FOR: BASKETBALLS. BASKETBALL BACK-
`BOARDS, DECORATIVE WIND SOCKS, AND
`BOARD GAMES. IN CLASS 28 (U.S. CLS. 22, 23.
`38 AND 750).
`FIRST USE
`12-34-1965.
`
`I2~3l~1965;
`
`IN COMMERCE
`
`OWNER OF U.S. REG. NOS.
`I,6l8,023.
`SEC. 2(F) AS TO “KENTUCKY".
`
`I.607.7|9 AND
`
`SER. NO. 75-084,197, FILED 4—5—l996.
`
`NORA BUCHANAN WILL, EXAMINING AT-
`TORNEY
