Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA764090
`08/12/2016
`
`ESTTA Tracking number:
`
`Filing date:
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`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
`
`ARD Champs, Inc.
`
`Granted to Date
`of previous ex-
`tension
`
`Address
`
`09/14/2016
`
`12313 Greco Drive
`Orlando, FL 32824
`UNITED STATES
`
`Attorney informa-
`tion
`
`Allison R. Imber, Esq.
`Allen, Dyer, Doppelt, Milbrath & Gilchrist, P.A.
`255 South Orange AvenueSuite 1401
`Orlando, FL 32801
`UNITED STATES
`aimber@addmg.com Phone:407.841.2330
`
`Applicant Information
`
`Application No
`
`86787191
`
`Publication date
`
`05/17/2016
`
`Opposition Filing
`Date
`
`Applicant
`
`08/12/2016
`
`Opposition Peri-
`od Ends
`
`09/14/2016
`
`2Fit Your Fitness Partner Inc
`1751 85th ST APT 4A
`Brooklyn, NY 11214
`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: Athletic tops and bottoms for running; Ath-
`letic clothing, namely, shirts, shorts, and pants; Clothing for horseriding, namely, pants and jackets;
`Clothing for wear in judo practices; Clothing made ofleather, namely, skirts, pants, jacketsand belts;
`Evening gowns; Gloves for cyclists; Gowns; Gym shorts; Gymwear, namely, shirts, shorts and pants;
`Ankle warmers; Evening wear, namely, dresses, coats and scarves; Gloves; Judo suits; Riding
`gloves; Riding jackets; Riding trousers; Shorts; Sports caps and hats; Sportswear, namely, shirts,
`shorts and pants; Sweat bands; Sweat bottoms; Sweat pants; Sweat shirts; Sweat shorts; Sweat
`suits;Sweatabsorbent underclothing; Teeshirts
`
`Applicant Information
`
`Application No
`
`86847214
`
`Publication date
`
`05/24/2016
`
`Opposition Filing
`Date
`
`Applicant
`
`08/12/2016
`
`Opposition Peri-
`od Ends
`
`2Fit Your Fitness Partner Inc
`1751 85th ST APT 4A
`Brooklyn, NY 11214
`
`

`
`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: Athletic tops and bottoms for running; Ath-
`letic clothing, namely, shirts, shorts, and pants; Clothing for horseriding, namely, pants and jackets;
`Clothing for wear in judo practices; Clothing made ofleather, namely, skirts, pants, jacketsand belts;
`Evening gowns; Gloves for cyclists; Gowns; Gym shorts; Gymwear, namely, shirts, shorts and pants;
`Ankle warmers; Evening wear, namely, dresses, coats and scarves; Gloves; Judo suits; Riding
`gloves; Riding jackets; Riding trousers; Shorts; Sports caps and hats; Sportswear, namely, shirts,
`shorts and pants; Sweat bands; Sweat bottoms; Sweat pants; Sweat shirts; Sweat shorts; Sweat
`suits;Sweatabsorbent underclothing; Teeshirts
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`Fraud on the USPTO
`
`In re Bose Corp., 580 F.3d 1240, 91 USPQ2d
`1938 (Fed. Cir. 2009)
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Application/ Registra-
`tion No.
`
`Registration Date
`
`Word Mark
`
`Goods/Services
`
`U.S. Application/ Registra-
`tion No.
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`Registration Date
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`Word Mark
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`Goods/Services
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`Application Date
`
`NONE
`
`NONE
`
`NONE
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`2FIT
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`a variety of clothing and sports and fitness equipment
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`Application Date
`
`NONE
`
`NONE
`
`NONE
`
`4FIT
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`a variety of clothing and sports and fitness equipment
`
`U.S. Application/ Registra-
`tion No.
`
`Registration Date
`
`NONE
`
`NONE
`
`Application Date
`
`NONE
`
`

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`Design Mark
`
`Goods/Services
`
`a variety of clothing and sports and fitness equipment
`
`U.S. Application/ Registra-
`tion No.
`
`Registration Date
`
`NONE
`
`NONE
`
`Application Date
`
`NONE
`
`

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`Design Mark
`
`Goods/Services
`
`a variety of clothing and sports and fitness equipment
`
`Attachments
`
`2FIT drawing.jpg
`4FIT drawing.jpg
`opp.pdf(55506 bytes )
`
`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.
`
`Certificate of Service
`
`Signature
`
`/Christina Jensen/
`
`Name
`
`Date
`
`Christina Jensen
`
`08/12/2016
`
`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`In the Matter of Trademark Application Serial Nos. 86/787191 and 86/847214
`For the Marks 2FIT YOUR FITNESS PARTNER & Design and
`4FIT FOR BEING SHAPED & Design, respectively
`Published in the Official Gazette on May 17th and 24th, 2016, respectively
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`ARD Champs, Inc.,
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`Opposers,
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`
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`Opposition No.
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`
`
`
`
`
`
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`vs.
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`2Fit Your Fitness Partner Inc.,
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`Applicant.
`
`
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`
`
`
`
`/
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`NOTICE OF OPPOSITION
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`ARD Champs, Inc. (“Opposer”), a Florida corporation with an address at 12313 Greco
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`
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`Drive, Orlando, Florida 32824, believes that it will be damaged by the registration of the marks
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` and
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` (collectively, “Applicant’s Marks”) as shown in U.S. Trademark
`
`Application Serial Nos. 86/787191 and 86/847214, respectively, (collectively, the “Subject
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`Applications”), and specified for use in connection with a variety of clothing items in
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`International Class 25, as published in the Official Gazette on May 17th and 24th, 2016,
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`respectively, and hereby opposes same.
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`The grounds for this Opposition are as follows:
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`1
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`

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`1.
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`Opposer is the owner of the marks 2FIT, 4FIT,
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` and
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` (collectively, “Opposer’s Marks”), which it has used
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`in connection with a variety of clothing and sports and fitness equipment (collectively,
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`“Opposer’s Goods”) since at least as early as 2012 through its predecessor-in-interest, Mr. Amer
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`Ayub.
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`2.
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`Opposer has extensively promoted and continuously used its marks throughout
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`the United States, and has had significant commercial success in connection with the variety of
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`clothing and sports and fitness equipment offered under its Marks. As a result, Opposer’s Marks
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`have developed valuable goodwill within the relevant trade and industry, and Opposer enjoys
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`nationwide trademark rights in its Marks.
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`3.
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`4.
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`Opposer’s Marks are inherently distinctive and are valuable assets of Opposer.
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`Prior to filing the Subject Applications, Applicant 2Fit Your Fitness Partner Inc.
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`(“Applicant”) purchased Opposer’s Goods for re-sale, and was otherwise aware that Opposer is
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`the owner of Opposer’s Marks.
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`2
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`

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`5.
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`In an attempt to usurp Opposer’s trademark rights in its Marks, Applicant now
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`seeks to register the marks
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` and
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` as shown in U.S. Trademark
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`Application Serial No. 86/787191 and 86/847214, respectively, both specified for use in
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`connection with “athletic tops and bottoms for running; athletic clothing, namely, shirts, shorts,
`
`and pants; clothing for horseriding, namely, pants and jackets; clothing for wear in judo
`
`practices; clothing made of leather, namely, skirts, pants, jackets and belts; evening gowns;
`
`gloves for cyclists; gowns; gym shorts; gymwear, namely, shirts, shorts and pants; ankle
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`warmers; evening wear, namely, dresses, coats and scarves; gloves; judo suits; riding gloves;
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`riding jackets; riding trousers; shorts; sports caps and hats; sportswear, namely, shirts, shorts and
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`pants; sweat bands; sweat bottoms; sweat pants; sweat shirts; sweat shorts; sweat suits;
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`sweatabsorbent underclothing; teeshirts” in International Class 25 (collectively, the “Opposer’s
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`Goods”).
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`6.
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`Applicant filed U.S. Trademark Application Serial No. 86/787191 on October 14,
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`2015 and filed U.S. Trademark Application Serial No. 86/847214 on December 12, 2015, both
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`on the basis of Applicant’s intent to use the marks in commerce. Upon information and belief,
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`Applicant has not yet begun to use its Marks in U.S. commerce.
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`7.
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`The Subject Applications contained the following representations made by Nadia
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`Najum, the President of Applicant, which were made under penalty of perjury (emphasis added):
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`The undersigned, being hereby warned that willful false statements and the like so made
`are punishable by fine or imprisonment, or both, under 18 U.S.C. Section 1001, and that
`such willful false statements, and the like, may jeopardize the validity of the application
`or any resulting registration, declares that he/she is properly authorized to execute this
`application on behalf of the applicant; he/she believes the applicant to be the owner of the
`trademark/service mark sought to be registered, or, if the application is being filed under
`15 U.S.C. Section 1051(b), he/she believes applicant to be entitled to use such mark in
`commerce; to the best of his/her knowledge and belief no other person, firm, corporation,
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`3
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`or association has the right to use the mark in commerce, either in the identical form
`thereof or in such near resemblance thereto as to be likely, when used on or in
`connection with the goods/services of such other person, to cause confusion, or to cause
`mistake, or to deceive; and that all statements made of his/her own knowledge are true;
`and that all statements made on information and belief are believed to be true.
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`8.
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`On June 24, 2016, Opposer wrote to Applicant demanding that it cease using
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`Applicant’s Marks and abandon the Subject Applications. Applicant refused, necessitating the
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`instant opposition.
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`COUNT I: LIKELIHOOD OF CONFUSION
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`9.
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`The allegations contained in paragraphs 1-8 above are incorporated herein by
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`reference.
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`10.
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`Opposer used its Marks in commerce prior the filing date of the Subject
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`Applications and before Applicant’s first use of Applicant’s Marks in connection with any of the
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`Opposer’s Goods within the United States.
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`11.
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`Applicant’s Marks are confusingly and deceptively similar to Opposer’s Marks.
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`Applicant’s Marks are very similar if not identical in sight, sound, connotation, and commercial
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`impression to Opposer’s Marks. Applicant has copied the designs of Opposer’s Marks in an
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`attempt to usurp the goodwill therein.
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`12.
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`Applicant’s Goods are very similar if not identical to Opposer’s Goods.
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`13.
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`The channels of trade and class of purchasers for Applicant’s Goods will be very
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`similar or identical to those of Opposer’s Goods if and when Applicant begins making sales of its
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`Goods.
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`14. Due to the similarity between Applicant’s Marks and its Goods, as well as
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`Opposer’s Marks and its Goods, not to mention the likely similarity of the respective channels of
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`trade and classes of purchasers, the registration of Applicant’s Marks will cause great damage
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`4
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`

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`and injury to Opposer. Persons familiar with Opposer’s Marks and Goods would likely confuse
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`Applicant’s Goods with those provided by Opposer. Any defect, objection or fault found with
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`Applicant’s Goods offered under its Mark may reflect upon and expose Opposer to liability, and
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`seriously injure the reputation that Opposer has established for its Goods.
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`15.
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`Applicant has admitted that there is a likelihood of confusion between its Marks
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`and Opposer’s Marks by swearing under penalty of perjury in an eBay.com declaration that
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`Opposer’s Marks infringed its alleged trademark rights and certain of Opposer’s Goods should
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`be removed from eBay.com as a result.
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`16.
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`If Applicant is granted the registrations herein opposed, it would obtain at least a
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`prima facie exclusive right to use its Marks in the United States, thereby causing damage and
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`injury to Opposer.
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`COUNT II: FRAUD
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`17.
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`The allegations contained in paragraphs 1-8 above are incorporated herein by
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`reference.
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`18.
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`Applicant’s representations that it was the owner of its Marks and that no other
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`person, firm, corporation or association had the right to use the mark in commerce were false
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`statements made knowingly with the intent to mislead the United States Patent and Trademark
`
`Office into approving the Subject Applications for publication.
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`19.
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`At the time Applicant filed the Subject Applications, Applicant was aware of
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`Opposer’s trademark rights in Opposer’s Marks and knew that it was wrongfully attempting to
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`federally register Opposer’s Marks in an attempt to usurp Opposer’s trademark rights therein.
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`20.
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`The above-referenced knowingly false representations were material to the
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`registration of Opposer’s Marks. The Subject Applications would not have been approved for
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`5
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`publication without these representations being made, and they therefore constitute fraud on the
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`United States Patent and Trademark Office.
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`21.
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`If Applicant is granted the registrations herein opposed, it would obtain at least a
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`prima facie exclusive right to use its Marks in the United States, thereby causing damage and
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`injury to Opposer.
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`
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`WHEREFORE, Opposer prays that this Opposition be sustained and U.S. Trademark
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`Application Serial Nos. 86/787191 and 86/847214 be rejected, and that Opposer be granted such
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`additional relief as the Board deems just and proper.
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`Respectfully submitted,
`
`
`
`
`
`
`/Allison R. Imber/
`Allison R. Imber, Esq.
`Jaafar Choufani, Esq.
`Allen, Dyer, Doppelt, Milbrath & Gilchrist, P.A.
`255 South Orange Avenue
`Suite 1401
`Orlando, Florida 32801
`Phone (407) 841-2330
`Fax (407) 841-2343
`Email: aimber@addmg.com
`
`jchoufani@addmg.com
`
`Attorneys for Opposer
`ARD Champs, Inc.
`
`
`
`
`Dated: August 12, 2016
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`6
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`

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`CERTIFICATE OF SERVICE
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`I HEREBY CERTIFY that a true and correct copy of the foregoing was served by U S.
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`Mail, postage prepaid, on August 12, 2016, to:
`
`Nadia Najum
`2Fit Your Fitness Partner Inc.
`1751 85th St., Apt 4A
`Brooklyn, NY 11214-2931
`
`
`
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`/Christina Jensen/
`
` Christina Jensen, Legal Assistant
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`7