Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA763694
`08/10/2016
`
`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
`
`University of Kentucky
`
`Granted to Date
`of previous ex-
`tension
`
`Address
`
`Attorney informa-
`tion
`
`08/10/2016
`
`Joe Craft Center, 338 Lexington Avenue
`Lexington, KY 40506
`UNITED STATES
`
`Michael S. Hargis
`King & Schickli, PLLC
`800 Corporate Drive
`Lexington, KY 40503
`UNITED STATES
`michael@iplaw1.net Phone:8592520889
`
`Applicant Information
`
`Application No
`
`86830732
`
`Publication date
`
`04/12/2016
`
`Opposition Filing
`Date
`
`Applicant
`
`08/10/2016
`
`Vrana, John
`603 Fellowship Rd
`Mount Laurel, NJ 08054
`UNITED STATES
`
`Opposition Peri-
`od Ends
`
`08/10/2016
`
`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: Polo shirts; Shorts; Sweatpants; Sweat-
`shirts; T-shirts
`
`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.
`
`2122847
`
`Registration Date
`
`12/23/1997
`
`Word Mark
`
`Design Mark
`
`KENTUCKY WILDCATS
`
`Description of
`
`NONE
`
`Application Date
`
`04/05/1996
`
`Foreign Priority
`Date
`
`NONE
`
`
`ESTTA763694
`08/10/2016
`
`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
`
`University of Kentucky
`
`Granted to Date
`of previous ex-
`tension
`
`Address
`
`Attorney informa-
`tion
`
`08/10/2016
`
`Joe Craft Center, 338 Lexington Avenue
`Lexington, KY 40506
`UNITED STATES
`
`Michael S. Hargis
`King & Schickli, PLLC
`800 Corporate Drive
`Lexington, KY 40503
`UNITED STATES
`michael@iplaw1.net Phone:8592520889
`
`Applicant Information
`
`Application No
`
`86830732
`
`Publication date
`
`04/12/2016
`
`Opposition Filing
`Date
`
`Applicant
`
`08/10/2016
`
`Vrana, John
`603 Fellowship Rd
`Mount Laurel, NJ 08054
`UNITED STATES
`
`Opposition Peri-
`od Ends
`
`08/10/2016
`
`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: Polo shirts; Shorts; Sweatpants; Sweat-
`shirts; T-shirts
`
`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.
`
`2122847
`
`Registration Date
`
`12/23/1997
`
`Word Mark
`
`Design Mark
`
`KENTUCKY WILDCATS
`
`Description of
`
`NONE
`
`Application Date
`
`04/05/1996
`
`Foreign Priority
`Date
`
`NONE
`
`
`
`Mark
`
`Goods/Services
`
`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
`
`U.S. Application/ Registra-
`tion No.
`
`Registration Date
`
`Word Mark
`
`Goods/Services
`
`U.S. Application/ Registra-
`tion No.
`
`Registration Date
`
`Word Mark
`
`Goods/Services
`
`NONE
`
`NONE
`
`WILDCATS
`
`Clothing
`
`NONE
`
`NONE
`
`WILDCAT NATION
`
`Clothing
`
`Application Date
`
`NONE
`
`Application Date
`
`NONE
`
`Attachments
`
`Notice of Opposition.pdf(3369494 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
`
`/Michael S. Hargis/
`
`Name
`
`Date
`
`Michael S. Hargis
`
`08/10/2016
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of Registration Application Serial No. 86/830,732
`
`Filed November 24, 2015
`For the mark WILDCAT NATION
`
`Published in the Official Gazette on April 12, 2016
`
`UNIVERSITY OF KENTUCKY,
`
`Opposer,
`
`v.
`
`.
`:
`
`OPPOSITION NO.
`
`JOHN VRANA,
`
`Applicant.
`
`NOTICE OF OPPOSITION
`
`The University of Kentucky (“University”), 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 WILDCAT NATION shown in
`
`Registration Application Serial No. 86/ 830,732 and hereby opposes the same. The fee under 37
`
`CFR §2.6(a)(17) ($300/elass x l) is being paid by Deposit Account at the time of filing with
`
`ESTTA.
`
`As grounds for opposition, it is alleged that:
`
`1.
`
`Applicant John Vrana (“Applicant”) is an individual with an address at 603 Fellowship
`
`Rd, Mount Laurel, New Jersey 0805413.
`
`2.
`
`Applicant is the identified owner of the Registration Application Serial No. 86/830,732
`
`(the “‘732 application”), filed on November 24, 2015, for the mark WILDCAT NATION
`
`to identify: “polo shirts; shorts; sweatpants; sweatshirts; and T-shirts” in international
`
`
`
`class 25.
`
`Applicant is the record owner of numerous other applications to register marks
`
`incorporating collegiate and professional team mascots, including but not limited to
`
`applications to register the WILDCAT COUNTRY mark (App. Ser. No. 86/581,392),
`
`ONCE A BUCKEYE, ALWAYS A BUCKEYE mark (App. Ser. No. 86/535,935), the
`
`ONCE A GATOR, ALWAYS A GATOR mark (App. Ser. No. 86/545,767), the ONCE
`
`A PHILLIE, ALWAYS A PHILLIE mark (App. Ser. No. 86/536,026), the ONCE A
`
`SPARTAN, ALWAYS A SPARTAN mark (App. Ser. No. 86/545,559), the ONCE AN
`
`EAGLE, ALWAYS AN EAGLE mark (App. Ser. No. 86/543,163), the ONCE A
`
`PANTHER, ALWAYS A PANTHER mark (App. Ser. No. 86/543,143), the ONCE A
`
`BULLDOG, ALWAYS A BULLDOG mark (App. Ser. No. 86/543,060), and the ONCE
`
`A BEAR, ALWAYS A BEAR mark (App. Ser. No. 86/535,973). Applicant is attempting
`
`to register marks that trade on the goodwill and fame of various colleges and universities
`
`as well as professional sports teams across the United States.
`
`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 programs, and athletic programs. In 2014, the University enrolled
`
`over 30,000 students.
`
`The University of Kentucky, through its athletic programs and otherwise, has used the
`
`word WILDCATS as the University’s nickname, its mascot, its athletic identify, and as a
`
`trademark to identify itself as the source of a wide variety of goods and services,
`
`including apparel. The WILDCATS mark has become a strong source-identifier for the
`
`University’s educational and entertainment products and services.
`
`
`
`Since at least prior in time to the date Applicant filed its intent-to-use application for its
`
`WILDCAT NATION mark, the University has used and licensed its WILDCATS mark
`
`in connection with a variety of products, including apparel. The University’s licensed
`
`products bearing the WILDCATS mark are sold across the United States.
`
`Growing out of its rights in the WILDCATS Mark, the University uses the mark
`
`“WILDCAT NATION” to promote its goods and services, including licensing the mark
`
`in connection with apparel as shown in Exhibit A.
`
`The WILDCATS and WILDCAT NATION mark are of great value to the University and
`
`embody the valuable reputation and goodwill of the University, its athletic teams, and the
`
`University’s licensed merchandise associated therewith.
`
`The University has also used the KENTUCKY WILDCATS mark 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 B) 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 November 24, 2015, filing date.
`
`University is the owner of the ‘847 registration.
`
`'
`
`University 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.
`
`The ‘847 registration is now incontestable pursuant to 15 U.S.C. §1065, providing
`
`conclusive evidence of University’s ownership of the mark and of its exclusive right to
`
`10.
`
`ll.
`
`12.
`
`13.
`
`14.
`
`
`
`use the registered KENTUCKY WILDCATS mark in commerce.
`
`Count One
`
`Likelihood of Confusion: 15 U.S.C. §10521d1
`
`15.
`
`16.
`
`17.
`
`18.
`
`19.
`
`University repeats and realleges each and every allegation set forth in Paragraphs 1
`
`through 14.
`
`University’s rights in its WILDCATS marks, including its registered KENTUCKY
`
`WILDCATS mark, predate Applicant’s filing date for the “732 application.
`
`Applicant’s applied-for WILDCAT NATION mark subsumes the entirety of University’s
`
`WILDCATS mark and closely resembles University’s KENTUCKY WILDCATS mark
`
`in sight, sound, connotation and commercial impression.
`
`The applied-for Class 25 goods, are identical or highly related to the goods on which
`
`University uses its WILDCATS mark and those identified in University’s “847'
`
`registration.
`
`The applied-for Class 25 goods, as identified in the “732 application, are presumed to be
`
`sold and distributed through the same, similar, and/or overlapping channels of commerce
`
`with the goods in the ‘847 registration.
`
`20.
`
`Based on the similarity of the Applicant’s and University’s marks and the relatedness of
`
`Applicant’s applied-for goods and University’s WILDCATS and/or KENTUCKY
`
`WILDCATS-branded goods, the public is likely to incorrectly believe that Applicant’s
`
`WILDCAT NATION-branded Class 25 goods are connected to the University of
`
`Kentucky.
`
`21.
`
`22.
`
`This confusion will cause irreparable damage to the University of Kentucky.
`
`The Application should not be allowed under 15 U.S.C. § 1052(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, University requests that this opposition be sustained, that registration of
`
`the mark in the ‘732 application be denied, and that University have such other and further relief
`
`as deemed appropriate.
`
`Dated: August 10, 2016
`
`By:
`
`Respectfully submitted,
`
`Mich e1 S. Hargis
`Trevor T. Graves
`
`KING & SCHICKLI, PLLC
`
`247 North Broadway
`Lexington, KY 40507-1058
`Telephone: (859) 252-0889
`Facsimile: (859) 252-0779
`
`Attorneys for Opposcr
`University of Kentucky
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on this the 10th day of August 2016, a true and correct copy of the
`foregoing Notice of Opposition was served on attorney for Applicant via electronic mail and
`first—class mail, U.S. Mail, postage prepaid, to:
`
`Matthew H. Swyers, Esq.
`The Trademark Company
`344 Maple Avenue, West, PMB 151
`Vienna, VA 22180
`
`mswyers@thetrademarkcompany.com
`
` Mich e] S. Hargis
`Attorney for Opposer
`University of Kentucky
`
`
`
`EXHIBIT A
`
`
`
`
`
`EXHIBIT B
`
`
`
`Int. Cls.: 16, 25 and 28
`
`Prior U.S. 01s.: 2, 5, 22, 23, 29, 37, 38, 39 and 50
`
`United States Patent and Trademark Office
`
`Reg. No. 2,122,847
`Registered Dec. 23, 199‘?
`
`TRADEMARK
`PRINCIPAL REGISTER
`
`KENTUCKY WILDCATS
`
`UNIVERSITY OF KENTUCKY (KENTUCKY
`STATE UNIVERSITY)
`LEXINGTON, KY 405060019
`
`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 :6 (us. CLS. 2. 5. 22,
`23. 29. 31, 38 AND 50).
`IN COMMERCE
`FIRST USE
`12—31—1950;
`12—31—1950.
`FOR: T-SHIRTS, SPORT SHIRTS, SHORTS.
`SWEATSHIRTS. MUFFLERS. HATS. JACKETS.
`ATHLETIC JERSEYS, SWEAT?ANTS, AND
`CLOTH BIBS, IN CLASS 25 (US. CLS. 22 AND
`39).
`
`12—31—1940:
`
`[N COMMERCE
`
`FIRST USE
`12—31—l940.
`FOR: BASKETBALLS. BASKETBALL BACK-
`BOARDS, DECORATIVE. WIND SOCKS, AND
`BOARD GAMES. IN CLASS 28 (US. (31.5 22. 23.
`38 AND 50).
`‘
`FIRST USE 12—31-1965;
`IN COMMERCE
`I2—31-I965.
`OWNER OF US. REG. NOS. 1,607,719 AND
`l.613.023.
`SEC. 2(F) AS TO "KENTUCKY".
`
`SER. NO. 75—084,19?, FILED 44—1996.
`
`NORA BUCHANAN WILL. EXAMINING AT;
`TORNEY
`
`
`
`{mo/2016
`
`Trademark Status & Document Retrieval
`
`t. The Post Registration "Maintenance Tab" has been temporarily disabled. it will return seen. 2. TSDR now displays information regarding M5
`
`STATUS
`
`DOCUMENTS
`
`m E Print
`
`Generated on: This page was generated by TSDR on 2016-08-10 14:57:35 EDT
`
`Mark: KENTUCKY WiLDCATS
`
`No image exists for this
`case.
`
`US Serial Number: 7508419?
`
`Application Filing Date: Apr. 05, 1996
`
`US Registration Number: 2122847
`
`Registration Date: Dec. 23, 1997
`
`Register: Principe:
`
`Mark Type: Trademark
`
`TMS Common Status
`
`Descriptor:
`
`Status: The registration has been renewed.
`
`Status Bate:
`
`Apr. @8100?
`
`Publication Date:
`
`Mar. 18, 1997
`
`LIVE/REGISTRATlONiissued and Active
`
`The trademark application has been registered with the Otfi
`
`v Mark information
`
`A Coltrane-e mt
`
`Mark Literal Elements:
`
`KENTUCKY WILDCATS
`
`Standard Character Claim:
`
`No
`
`Mark Drawing Type:
`
`1 - TYPESET WORD(S) ILETTER(S) [NUMBER(S)
`
`Acquired Distinctiveness
`Claim:
`
`in part
`
`Distinctiveness Limitation
`
`as to "KENTUCKY"
`
`Statement:
`
`v Related Properties Information
`
`Claimed Ownership of US 1607719.1618023
`
`Registrations:
`
`v Goods and Services
`
`Note:
`
`The following symbols indicate that the registrantlowner has amended the goodsiservices:
`
`. Brackets [.1 indicate deleted goodslservices;
`
`http://tsdr.uspto.govl#caseN um ber=75084197&caseType=SER|AL_NO&searchType=statusSearch
`
`1/4
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`
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`
`. Double parenthesis ((..}) identify any goods/services not claimed in a Section 15 affidavit ofinoontestahility; and
`. Asterisks *..* identify additional (new) wording in the goods/services.
`For:
`
`art prints, athletic exhibition schedules, writing tablets. writing paper, stickers for windows, decals. note ea
`binders. self-adhesive note pads, paper bibs, and posters
`
`lnternationat Class{es):
`
`016 — Primary Class
`
`Class Status:
`
`ACTEVE
`
`Basis:
`
`no
`
`First Use:
`
`Dec.31,1950
`
`US Class(es): 002, {305, 022, 023, 0.
`
`Use in Commerce: Dec. 31. 1850
`
`For:
`
`T—shirts, sport shirts, shorts, sweatshirts, mufflers, hats, jaokets, athletiojerseys, sweatpants, and cloth mm
`
`international Class(es):
`
`025 — Primary Class
`
`Ciass Status:
`
`ACTIVE
`
`Basis:
`
`1(8)
`
`First Use:
`
`Dec. 31, 1940
`
`U.S Classtes): 022, 039
`
`Use in Commerce: Dec. 31. 1940
`
`For:
`
`basketbails, basketball backboards, decorative wind socks, and board games
`
`international Classtes):
`
`028 - Primary Class
`
`Class status:
`
`ACTSVE
`
`Basis:
`
`1(a)
`
`First Use:
`
`Deo.31,1965
`
`v Basis Information (Case Level)
`
`[1.5 Ctass(es): O22, 023, 038, 050
`
`Use in Commerce: Deo.31,1965
`
`Filed Use:
`
`Yes
`
`Filed ITU:
`
`Filed 448:
`
`Fited 44E:
`
`Filed 66A:
`
`Filed No Basis:
`
`No
`
`No
`
`No
`
`No
`
`No
`
`Currently Use: Yes
`
`Currentty ITU: No
`
`Currently 440: No
`
`Currentty 44E: No
`
`Currently 66A: No
`
`Currently No Basis: No
`
`Ame
`
`Ame
`
`Ame
`
`Ame
`
`v Current Owner(s) Information
`
`Owner Name:
`
`UNlVERSITY OF KENTUCKY
`
`Owner Address:
`
`Joe Craft Center, 338 Lexington Avenue
`Lexington, KENTUCKY UNITED STATES 405060604
`
`Legal Enttty Type:
`
`STATE UNlVERSEW
`
`v Attorney/CorreSpondence Information
`
`Attorney of Record
`
`State or Country Where KENTUCKY
`Organized:
`
`Attorney Name:
`
`MICHAEL S. HARGIS
`
`Docket Number: 850—015 AT
`
`httpu'i‘tsdr.uspto.govf#caseNumber=75084197&caseType=SERlAL__NO&searchType=statusSearch
`
`24
`
`
`
`8i10!2016
`
`Correspondent
`
`Trademark Status & Document Retrieval
`
`Correspondent Michael S. Hargis
`NamelAddress: King & Schickii. PLLC
`
`247 North Broadway
`Lexington, KENTUCKY UNITED STATES 405074 058
`
`Phone: 859 252 0889
`
`Fax: 859 252 0779
`
`Correspondent o-mail: michael@iglaw1.net
`
`Correspondent e-mait Yes
`Authorized:
`
`Domestic Representative - Not Found
`
`v Prosecution History
`
`Date
`
`{Set}. 23, 2008
`
`Sep. 23, 2008
`
`Apr. 25, 2007’
`
`Apr. 18, 2007
`
`.Apr. 18, 2007
`
`Apr. 10, 2007
`
`:Mar.12.2007
`
`Mar. 12. 2007
`
`Aug. 19, 2005
`
`Aug. 19. 2005
`
`Dec. 15, 2003
`
`Oct. 21 . 2003
`
`Oct. 21, 2003
`
`Dec. 23, 1997
`
`Mar. 18, 1997
`
`Feb. 14. 1997
`
`Nov. 26, 1996
`
`Nov. 14. 1996
`
`Oct. 21. 1996
`
`Aug.19, 1995
`
`a:I3\.t.i§.].1-¢1,1996
`
`Description
`
`APPLECANTICORRESPONDENCE CHANGES (NON wRES PONSIVE}
`ENTERED
`
`TEAS CHANGE OF OWNER ADDRESS RECEIVED
`
`CASE FILE IN TICRS
`
`Proceeding Number
`
`88888
`
`REGISTERED AND RENEWED (FIRST RENEWAL - 10 YRS)
`
`REGISTERED — SEC. 8 {10-YR) ACCEPTED/SEC. 9 GRANTED
`
`ASSIGNED TO PARALEGAL
`
`70132
`
`70132
`
`REGISTERED - COMBINED SECTEON 8 {10~YR) & SEC. 9 FILED
`
`TEAS SECTION 3 & 9 RECEIVED
`
`TEAS CHANGE OF OWNER ADDRESS RECEIVED
`
`TEAS CHANGE OF CORRESPONDENCE RECEIVED
`
`REGISTERED - SEC. 8 (6»YR) ACCEPTED 8< SEC. 15 ACK.
`
`REGISTERED — SEC. 8 (En-YR) & SEC. 15 FILED
`
`TEAS SECTION 8 8. 15 RECEFVED
`
`REGISTERED-PRINCIPAL REGISTER
`
`PUBLISHED FOR OPPOSITION
`
`NOTICE OF PUBLICATION
`
`APPROVED FOR PUB - PRINCIPAL REGISTER
`
`EXAMINER‘S AMENDMENT MAILED
`
`CORRESPONDENCE RECEIVED EN LAW OFFICE
`
`NON-FINAL ACTION MAILED
`
`ASSIGNED TO EXAMENER
`
`69222
`
`v Maintenance Filings or Post Registration Information
`
`Affidavit of Continued Use: Section 8 - Accepted
`
`Affidavit of inoontestabitity: Section 15 - Accepted
`
`Renown-t Date: Dec. 23. 2007
`
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`- TM Staff and Location Information
`
`TM Staff Information - None
`
`. Pike Looation
`
`Current Location: SCANNING ON DEMAND
`
`Date in Location: Apr. 25, 200?
`
`v Assignment Abstract Of Title Information - Click to Load
`
`v Proceedings - Click to Load
`
`
`
`http:/ftsdrusptogovficaseNumber=75084197&ca5eType= SERIALHN O&searchType=statusSearch
`
`4J4
`
`
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