Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA757704
`07/12/2016
`
`ESTTA Tracking number:
`
`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
`
`Salt Life, LLC
`
`Corporation
`
`322 South Main Street
`Greenville, SC 29601
`UNITED STATES
`
`Citizenship
`
`Gerogia
`
`Attorney informa-
`tion
`
`Jason A. Pittman
`Dority & Manning
`75 Beattie Place
`Greenville, SC 29601
`UNITED STATES
`jpittman@dority-manning.com, jkloiber@dority-manning.com
`Phone:8645271544
`
`Applicant Information
`
`Application No
`
`86798838
`
`Publication date
`
`06/21/2016
`
`Opposition Filing
`Date
`
`Applicant
`
`07/12/2016
`
`Nutt, Jerry
`217 Main Street
`Destin, FL 32541
`UNITED STATES
`
`Opposition Peri-
`od Ends
`
`07/21/2016
`
`Goods/Services Affected by Opposition
`
`Class 025. First Use: 2015/09/01 First Use In Commerce: 2015/09/01
`All goods and services in the class are opposed, namely: T-shirts, hats, fishing shirts
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`Dilution by blurring
`
`Dilution by tarnishment
`
`Trademark Act Sections 2 and 43(c)
`
`Trademark Act Sections 2 and 43(c)
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`
`3762960
`
`Registration Date
`
`03/23/2010
`
`Word Mark
`
`SALT LIFE
`
`Application Date
`
`08/06/2009
`
`Foreign Priority
`Date
`
`NONE
`
`
`ESTTA757704
`07/12/2016
`
`ESTTA Tracking number:
`
`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
`
`Salt Life, LLC
`
`Corporation
`
`322 South Main Street
`Greenville, SC 29601
`UNITED STATES
`
`Citizenship
`
`Gerogia
`
`Attorney informa-
`tion
`
`Jason A. Pittman
`Dority & Manning
`75 Beattie Place
`Greenville, SC 29601
`UNITED STATES
`jpittman@dority-manning.com, jkloiber@dority-manning.com
`Phone:8645271544
`
`Applicant Information
`
`Application No
`
`86798838
`
`Publication date
`
`06/21/2016
`
`Opposition Filing
`Date
`
`Applicant
`
`07/12/2016
`
`Nutt, Jerry
`217 Main Street
`Destin, FL 32541
`UNITED STATES
`
`Opposition Peri-
`od Ends
`
`07/21/2016
`
`Goods/Services Affected by Opposition
`
`Class 025. First Use: 2015/09/01 First Use In Commerce: 2015/09/01
`All goods and services in the class are opposed, namely: T-shirts, hats, fishing shirts
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`Dilution by blurring
`
`Dilution by tarnishment
`
`Trademark Act Sections 2 and 43(c)
`
`Trademark Act Sections 2 and 43(c)
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`
`3762960
`
`Registration Date
`
`03/23/2010
`
`Word Mark
`
`SALT LIFE
`
`Application Date
`
`08/06/2009
`
`Foreign Priority
`Date
`
`NONE
`
`
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of the words "SALT LIFE".
`
`Class 016. First use: First Use: 2003/10/00 First Use In Commerce: 2003/10/00
`Stickers
`Class 025. First use: First Use: 2003/10/00 First Use In Commerce: 2003/10/00
`Caps; Shirts; Surf wear
`
`U.S. Registration
`No.
`
`4324994
`
`Registration Date
`
`04/23/2013
`
`Word Mark
`
`Design Mark
`
`SALT LIFE
`
`Application Date
`
`06/07/2011
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 025. First use: First Use: 2013/02/13 First Use In Commerce: 2013/02/13
`Clothing and apparel, namely, jackets, pants, shoes, and sandals
`
`U.S. Registration
`No.
`
`2959429
`
`Registration Date
`
`06/07/2005
`
`Application Date
`
`09/04/2003
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`SALT LIFE
`
`NONE
`
`Class 025. First use: First Use: 2003/10/02 First Use In Commerce: 2003/10/02
`Clothing and apparel, namely, caps, shirts, T-shirts, [ underwear, socks, pants,
`sweaters, jackets, shoes, sandals, ] bathing suits, Bermuda shorts, walking
`shorts, [ wet suits, ] swim trunks, caps with visors, visors, fleece pullovers, sweat
`shirts, surf wear, [ briefs, boxer briefs, panties, wind resistant jackets ]
`
`U.S. Registration
`No.
`
`4627064
`
`Application Date
`
`03/22/2013
`
`
`
`Registration Date
`
`10/28/2014
`
`Word Mark
`
`Design Mark
`
`SALT LIFE
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 025. First use: First Use: 2003/10/02 First Use In Commerce: 2003/10/02
`Clothing, namely, hats, caps, shirts, T-shirts, shorts, swim trunks, visors, fleece
`pullovers, sweat shirts, surf wear,jackets, pants, bandanas, sun sleeves,
`dresses and footwear
`
`Attachments
`
`77798829#TMSN.png( bytes )
`85339855#TMSN.png( bytes )
`85883591#TMSN.png( bytes )
`Notice of Opposition - as filed.pdf(176832 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
`
`/Jason A. Pittman/
`
`Name
`
`Date
`
`Jason A. Pittman
`
`07/12/2016
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the matter of trademark application Serial No. 86/798,838
`
`Salt Life, LLC
`
`
`
`
`
`
`
`
`
`
`v.
`
`
`
`
`
`
`Jerry Nutt
`
`
`
`
`
`
`
`
`
`
`
`
`
`Opposition No. _____________
`
`Serial No. 86/798,838
`
`Mark:
`
`
`
`
`
`
`
`
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`Opposer,
`
`
`
`
`
`
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`
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`
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`Applicant.
`
`
`
`
`
`
`NOTICE OF OPPOSITION
`
`
`
`Salt Life, LLC (“Opposer”), a limited liability company organized under the laws of the
`
`
`
`State of Georgia having a place of business at 322 South Main Street, Greenville, SC, 29601,
`
`will be damaged by registration of U.S. Application Serial No. 86/798,838 for the alleged mark
`
` (referred to herein sometimes as the “Applicant’s Mark”) for “T-shirts, hats,
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`fishing shirts” in International Class 025, filed by Jerry Nutt (“Applicant”) on October 26, 2015,
`
`and hereby opposes registration of the same pursuant to § 13 of the Lanham Act (15 U.S.C. §
`
`1063).
`
`
`
`As grounds in support of its Notice of Opposition, Opposer asserts as follows:
`
`1.
`
`Upon information and belief, Jerry Nutt is the owner of U.S. Trademark
`
`Application Serial No. 86/798,838 (“the ‘838 application”), filed on October 26, 2015, for the
`
`alleged mark
`
` for “T-shirts, hats, fishing shirts” in International Class 025.
`
`
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`Page 1 of 8
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`
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`2.
`
`Upon information and belief, the ‘838 application was filed on a use in commerce
`
`basis and Applicant has alleged use in commerce since as early as September 1, 2015.
`
`3.
`
`The ‘838 application was published for opposition on June 21, 2016 in the
`
`Official Gazette of the United States Patent and Trademark Office.
`
`4.
`
`Since long prior to the alleged first use in commerce and the filing date of the
`
`‘838 application, Opposer and/or its predecessors in interest have used, advertised, and promoted
`
`the mark SALT LIFE as a trademark, service mark, and/or have analogous usage in a trademark
`
`or service mark sense or alternatively in a trade name sense, or use analogous to trademark,
`
`service mark or trade name usage, in commerce and/or in interstate commerce, in connection
`
`with various products related to the field of clothing and apparel and in connection with other
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`products and/or services.
`
`5.
`
`Opposer owns extensive common law rights to its SALT LIFE marks. Opposer
`
`also owns United States trademark registrations on the principal register for its SALT LIFE
`
`marks, including at least the following United States trademark registrations.
`
`Trademark
`
`U.S.
`Trademark
`Registration
`No.
`3,762,960
`
`
`
`SALT LIFE
`
`4,324,994
`
`June 7, 2011
`
`
`
`Page 2 of 8
`
`Filing Date
`
`Date of First
`Use in
`Commerce
`
`International
`Class &
`Goods/Services
`
`August 6, 2009
`
`October
`2003
`
`February
`2013
`
`Class 16:
`Stickers
`Class 25: Caps,
`shirts, surf wear.
`Class 25:
`Clothing and
`Apparel, namely
`jackets, pants,
`shoes, and
`sandals.
`
`
`
`SALT LIFE
`
`2,959,429
`
`September 4, 2003 October
`2003
`
`SALT LIFE
`
`4,627,064
`
`March 22, 2013
`
`October
`2003
`
`Class 25:
`Clothing and
`apparel, namely,
`caps, shirts, T-
`shirts, bathing
`suits, Bermuda
`shorts, walking
`shorts, swim
`trunks, caps with
`visors, visors,
`fleece pullovers,
`sweat shirts, surf
`wear.
`Class 25:
`Clothing,
`namely, hats,
`caps, shirts, T-
`shirts, shorts,
`swim trunks,
`visors, fleece
`pullovers, sweat
`shirts, surf wear,
`jackets, pants,
`bandanas, sun
`sleeves, dresses
`and footwear.
`
`
`6.
`
`The registrations referenced above are valid and subsisting, in full force and
`
`effect, and constitute prima facie and/or conclusive evidence of Opposer’s exclusive right to use
`
`the marks in commerce in connection with the goods specified in the registrations.
`
`7.
`
`Opposer has priority of use in all respects for its SALT LIFE marks relative to
`
`Applicant’s alleged mark
`
` set forth in the ‘838 application as used in
`
`conjunction with various products and services, including clothing, shirts, T-shirts, surf wear and
`
`other products and services.
`
`
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`Page 3 of 8
`
`
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`8.
`
`Opposer’s SALT LIFE marks are inherently distinctive and have acquired
`
`distinctiveness through the long, continuous, and exclusive use of the SALT LIFE marks so that
`
`consumers associate the SALT LIFE marks with a single source.
`
`9.
`
`Opposer and its predecessors have generated significant revenue through the sale
`
`of products bearing the SALT LIFE marks to consumers across the United States.
`
`10.
`
`Opposer and its predecessors have made substantial investment in advertising,
`
`marketing, and promoting Opposer’s goods under Opposer’s SALT LIFE marks. Opposer and
`
`its predecessors have extensively used, advertised, promoted, and offered Opposer’s goods
`
`bearing Opposer’s SALT LIFE marks to the public through various channels of trade in
`
`commerce. Accordingly, Opposer’s customers and the public in general have come to know and
`
`recognize Opposer’s SALT LIFE marks and to associate the same with Opposer and/or the goods
`
`sold by Opposer.
`
`11.
`
`Opposer and its predecessors have sold and offered for sale goods, including
`
`clothing, bearing the SALT LIFE marks in a trading area of broad geographical scope
`
`encompassing the United States, including its territories.
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`12.
`
`The SALT LIFE marks are symbolic of the extensive goodwill and consumer
`
`recognition that Opposer has established through substantial expenditures of time, effort and
`
`other resources in the advertising and promotion of the goods Opposer sells and offers for sale
`
`under the SALT LIFE marks.
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`13.
`
`As a result of Opposer’s regular, extensive, and well-publicized use, as well as the
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`above-mentioned advertising, marketing, promotion, and sales, Opposer’s SALT LIFE marks
`
`have become famous and are associated exclusively with Opposer and its high quality goods.
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`
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`Page 4 of 8
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`
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`Indeed, Opposer’s marks have become famous within the meaning of 15 U.S.C. § 1125(c) prior
`
`to the October 26, 2015 filing date of the ‘838 application.
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`14.
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`Applicant’s mark is confusingly similar in sound, appearance, connotation, and
`
`overall commercial impression to Opposer's SALT LIFE marks. For instance, a side-by-side
`
`comparison of the Applicant’s mark and one of the SALT LIFE marks is below.
`
`
`
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`15.
`
`The goods identified under International Class 25 in the ‘838 application are
`
`identical to or closely related to the goods with which Opposer uses its SALT LIFE marks. For
`
`instance, “t-shirt, hats, fishing shirts” as identified in the ‘838 application are identical to or
`
`closely related to T-shirts, sweat shirts, fleece pullovers, shirts, caps, visors, hats, caps with
`
`visors, and other products and services offered by Opposer in conjunction with the SALT LIFE
`
`marks.
`
`
`
`Page 5 of 8
`
`
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`16.
`
`Applicant’s mark so resembles Opposer’s SALT LIFE marks that registration and
`
`use of the
`
` mark sought to be registered by Applicant in the ‘838 application is
`
`likely to cause confusion, mistake or to deceive consumers and lead consumers to believe
`
`Applicant’s goods and services as designated are goods and services of Opposer, or in some way
`
`backed by, sponsored by, franchised by, approved by, associated with, or otherwise connected
`
`with the good name and reputation of Opposer, to the damage and injury of the public, and to the
`
`damage and injury of Opposer and its goodwill in its SALT LIFE marks. Registration of the
`
`‘838 application is thus precluded under Section 2(d) of Lanham Act (15 U.S.C. § 1052(d)).
`
`17.
`
`Applicant’s mark so resembles Opposer’s SALT LIFE marks that registration and
`
`use of the Applicant’s mark sought to be registered by Applicant in the ‘838 application will
`
`cause dilution of the distinctive qualities of Opposer’s SALT LIFE marks by blurring Opposer’s
`
`SALT LIFE marks from association with a single source, namely Opposer. Such dilution will
`
`likely cause damage and injury to Opposer and its goodwill in its SALT LIFE marks.
`
`Registration of the ‘838 application is thus precluded under Section 13 and Section 43(c) of the
`
`Lanham Act (15 U.S.C. §§ 1063; 1125(c)).
`
`
`
`
`
`WHEREFORE, Opposer believes it will be damaged by registration of Applicant’s
`
` mark and prays that the present Opposition be granted and that registration of
`
`the ‘838 application be denied.
`
`[signature on following page]
`
`Page 6 of 8
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`Respectfully submitted,
`
`Date: July 12, 2016
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`DORITY & MANNING, P.A.
`
`/s/Jason A. Pittman
`J. Parks Workman
`pworkman@dority-manning.com
`Jason A. Pittman
`jpittman@dority-manning.com
`DORITY & MANNING, P.A.
`Attorneys at Law
`75 Beattie Place, Suite 1100
`Greenville, SC 29601
`Phone: 864-271-1592
`Fax: 864-233-7342
`
`Attorneys for Salt Life, LLC
`
`
`
`Page 7 of 8
`
`
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`CERTIFICATE OF SERVICE
`
` I
`
` hereby certify that on July 12, 2016, I served a true and complete copy of the foregoing
`
`NOTICE OF OPPOSITION on Applicant via First Class Mail, postage prepaid as follows:
`
`
`
`
`
`
`
`
`
`
`
`Jerry Nutt
`217 Main Street
`Destin, FL 32541
`
`
`
`
`
`/s/Jason A. Pittman
`
`Page 8 of 8
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