`ESTTA Tracking number:
`ESTTA801537
`02/15/2017
`
`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
`
`Attorney informa-
`tion
`
`Boy Scouts of America
`02/15/2017
`
`1325 West Walnut Hill Lane P.O. Box 152079
`Irving, TX 75015-2079
`UNITED STATES
`
`Gary A. Hecht, Esq.
`Fox Rothschild LLP
`P.O. Box 5231
`Princeton, NJ 08543-5231
`UNITED STATES
`ghecht@frof.com, dmcgregor@frof.com, ipdocket@frof.com, colszyk@frof.com
`Phone:215-299-2416
`
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`86914322
`02/15/2017
`
`CCG Creative, LLC
`1235 Ring Bill Loop
`Upper Marlboro, MD 20774
`UNITED STATES
`
`Publication date
`Opposition Peri-
`od Ends
`
`10/18/2016
`02/15/2017
`
`Goods/Services Affected by Opposition
`
`Class 035. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Retail on-line department stores; on-line re-
`tail store services featuring a wide variety of consumer goods; online retail store services featuring
`shoes; online retail store services featuring clothing, accessories, footwear, hats, belts, gloves,
`scarves, bags, handbags, packs, purses, luggage, briefcases, watches, jewelry, eyewear, home
`products, housewares, home décor, kitchen and cooking products, dishes, glassware, cutlery, bath-
`room products, cosmetics, beauty and personal care products, fragrances, skin and hair products,
`bedding and linens, baby goods, sporting goods, and storage and organization products
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`Dilution by blurring
`False suggestion of a connection with persons,
`living or dead, institutions, beliefs, or national
`symbols, or brings them into contempt, or disrep-
`
`Trademark Act Section 2(d)
`Trademark Act Sections 2 and 43(c)
`Trademark Act Section 2(a)
`
`
`
`ute
`Other
`
`Exclusive Rights Under 36 U.S.C. 30905
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`Registration Date
`
`4443273
`
`12/03/2013
`
`Word Mark
`Design Mark
`
`SCOUTSTUFF.ORG
`
`Application Date
`
`04/12/2013
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 035. First use: First Use: 2005/07/01 First Use In Commerce: 2005/07/01
`Online retail store services featuring clothing and apparel, literature, camping
`equipment, craft supplies, and home and gift wares
`
`1316207
`
`Application Date
`
`12/14/1981
`
`01/22/1985
`
`Foreign Priority
`Date
`SCOUT SHOP BOY SCOUTS OF AMERICA
`
`NONE
`
`NONE
`
`Class 042. First use: First Use: 1981/11/14 First Use In Commerce: 1981/11/14
`Retail Store Services-Namely, the Sale of Boy Scout Uniforms, Boy Scout In-
`signias, Camping Equipment for Boy Scouts andBoy Scout Trophies and
`Awards
`
`U.S. Registration
`No.
`Registration Date
`
`4731652
`
`05/05/2015
`
`Word Mark
`
`SCOUTWEAR
`
`Application Date
`
`12/03/2014
`
`Foreign Priority
`Date
`
`NONE
`
`
`
`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 025. First use: First Use: 2010/11/00 First Use In Commerce: 2010/11/00
`Clothing, namely, shirts, t-shirts, hats, pants, jackets, swimwear, sleepwear
`
`U.S. Registration
`No.
`Registration Date
`
`1215938
`
`11/09/1982
`
`Application Date
`
`02/17/1981
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`CUB SCOUTS
`
`NONE
`
`Class 025. First use: First Use: 1930/04/01 First Use In Commerce: 1930/04/01
`Items of Clothing Forming Part of a Uniform Consisting of Dress Shirts, T-Shirts,
`Pants, Shorts, Belts, Socks, Hats, and Neckerchiefs
`
`U.S. Registration
`No.
`Registration Date
`
`1215939
`
`11/09/1982
`
`Application Date
`
`02/17/1981
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`BOY SCOUTS OF AMERICA
`
`NONE
`
`Class 025. First use: First Use: 1911/01/31 First Use In Commerce: 1911/01/31
`Items of Clothing Forming Part of a Uniform Consisting of Shirts, Pants, Shorts,
`Skirts, [ Dresses, ] Belts, Socks, Hats, and Neckerchiefs
`
`U.S. Registration
`No.
`Registration Date
`
`1370697
`
`11/12/1985
`
`Word Mark
`Design Mark
`
`VARSITY SCOUT
`
`Application Date
`
`04/09/1984
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 200. First use: First Use: 1978/00/00 First Use In Commerce: 1978/00/00
`
`
`
`INDICATION OF MEMBERSHIP IN A SCOUTING ORGANIZATION FOR
`YOUNG MEN
`
`U.S. Registration
`No.
`Registration Date
`
`1695120
`
`06/16/1992
`
`Application Date
`
`12/21/1990
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`SCOUTMASTER
`
`NONE
`
`Class 200. First use: First Use: 1910/00/00 First Use In Commerce: 1910/00/00
`indicating membership in a scouting organization for boys
`
`U.S. Registration
`No.
`Registration Date
`
`1363872
`
`10/01/1985
`
`Application Date
`
`11/26/1984
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`BOY SCOUTS OF AMERICA
`
`NONE
`
`Class 200. First use: First Use: 1910/00/00 First Use In Commerce: 1910/00/00
`TO INDICATE MEMBERSHIP IN AN ORGANIZATION FOR YOUNG MEN
`
`U.S. Registration
`No.
`Registration Date
`
`1702357
`
`07/21/1992
`
`Application Date
`
`03/28/1991
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`CUB SCOUTS
`
`NONE
`
`Class 200. First use: First Use: 1945/00/00 First Use In Commerce: 1945/00/00
`indicating membership in an organization for boys
`
`U.S. Registration
`No.
`Registration Date
`
`2578122
`
`06/11/2002
`
`Word Mark
`Design Mark
`
`SEA SCOUTS
`
`Application Date
`
`04/10/2001
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`NONE
`
`
`
`Goods/Services
`
`Class 041. First use: First Use: 1915/12/31 First Use In Commerce: 1915/12/31
`EDUCATIONAL SERVICES, NAMELY, A CO-EDUCATIONAL PROGRAM FOR
`YOUNG ADULTS IN THE FIELD OF BOATING, SAILING, RAFTING AND
`SCUBA DIVING
`
`U.S. Registration
`No.
`Registration Date
`
`1213650
`
`10/19/1982
`
`Word Mark
`Design Mark
`
`EAGLE SCOUT
`
`Application Date
`
`04/27/1981
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`The mark consists of the words "Eagle Scout" with Eagle design.
`
`Class 200. First use: First Use: 1911/03/31 First Use In Commerce: 1911/03/31
`Indicating Membership in an Organization for Boys to Promote Moral, Physical
`and Spiritual Development
`
`U.S. Registration
`No.
`Registration Date
`
`3877547
`
`11/16/2010
`
`Word Mark
`Design Mark
`
`EAGLE SCOUT
`
`Application Date
`
`02/24/2009
`
`Foreign Priority
`Date
`
`NONE
`
`
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 200. First use: First Use: 1912/08/12 First Use In Commerce: 1912/08/12
`Indicating membership in a(n) ORGANIZATION FOR BOYS AND YOUNG MEN
`
`U.S. Application/ Registra-
`tion No.
`Registration Date
`Word Mark
`Goods/Services
`
`U.S. Application/ Registra-
`tion No.
`Registration Date
`Word Mark
`Goods/Services
`
`U.S. Application/ Registra-
`tion No.
`Registration Date
`Word Mark
`Goods/Services
`
`U.S. Application/ Registra-
`tion No.
`Registration Date
`Word Mark
`Goods/Services
`
`U.S. Application/ Registra-
`tion No.
`Registration Date
`Word Mark
`Goods/Services
`
`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
`
`Application Date
`
`NONE
`
`NONE
`BOY SCOUT
`clothing and watches
`
`NONE
`
`Application Date
`
`NONE
`
`NONE
`EAGLE SCOUT
`clothing and watches
`
`NONE
`
`Application Date
`
`NONE
`
`NONE
`CUB SCOUT
`clothing and watches
`
`NONE
`
`Application Date
`
`NONE
`
`NONE
`SCOUTSTUFF.ORG
`retail services for clothing, footwear, bags, back packs, watches, hats,
`accessories, sporting goods, camping goods, personal care items,
`and the like
`
`NONE
`
`Application Date
`
`NONE
`
`NONE
`SCOUT
`used to identify a member of Opposer#s organization and Opposer#s
`goods and services
`
`NONE
`
`Application Date
`
`NONE
`
`NONE
`SCOUTS
`used to identify membership in Opposer#s organization, troops and
`units of Opposer, and goods and services of Opposer
`
`NONE
`
`Application Date
`
`NONE
`
`NONE
`SCOUTING
`used in association with Opposer#s organization, participation in Op-
`
`
`
`U.S. Application/ Registra-
`tion No.
`Registration Date
`Word Mark
`Goods/Services
`
`U.S. Application/ Registra-
`tion No.
`Registration Date
`Word Mark
`Goods/Services
`
`U.S. Application/ Registra-
`tion No.
`Registration Date
`Word Mark
`Goods/Services
`
`poser#s programs and activities, and goods and services of Opposer
`
`NONE
`
`Application Date
`
`NONE
`
`NONE
`BOY SCOUTS
`used in association with Opposer#s organization, and goods and ser-
`vices of Opposer
`
`NONE
`
`Application Date
`
`NONE
`
`NONE
`BOY SCOUTS OF AMERICA
`clothing
`
`NONE
`
`Application Date
`
`NONE
`
`NONE
`VARSITY SCOUT
`clothing
`
`Attachments
`
`85902497#TMSN.png( bytes )
`86470349#TMSN.png( bytes )
`73474350#TMSN.png( bytes )
`76238519#TMSN.png( bytes )
`73307667#TMSN.png( bytes )
`77676931#TMSN.png( bytes )
`Notice of Opposition - 86914322 - Rack Scout.pdf(1199744 bytes )
`
`Signature
`Name
`Date
`
`/-d-/
`Deanna M. McGregor
`02/15/2017
`
`
`
`
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`In re Application Serial No. 86914322
`
`For the mark: “RACK SCOUT”
`
`Opposition No. _________
`
`:
`:
`:
`:
`:
`:
`:
`:
`:
`
`Boy Scouts of America,
`
`
`
`Opposer,
`
`
`
`
`
`CCG Creative, LLC
`
`
`
`Applicant.
`
`v.
`
`
`
`
`
`
`
`NOTICE OF OPPOSITION
`
`
`Opposer, Boy Scouts of America, believes that it will be damaged by registration
`
`of the mark “RACK SCOUT”, which is the subject of U.S. Trademark Application Serial
`
`No. 86914322, and hereby opposes registration of said mark. In support of its
`
`Opposition, Opposer alleges the following:
`
`1.
`
`Opposer, Boy Scouts of America, (hereinafter “Boy Scouts” or “Opposer”),
`
`is a federally chartered corporation organized under laws of the United States of
`
`America with a business address of 1325 West Walnut Hill Lane, P.O. Box 152079,
`
`Irving, TX 75015-2079.
`
`2.
`
`Applicant, CCG Creative, LLC, (hereinafter “CCG” or “Applicant”) is a
`
`limited liability company of Maryland having an address of 1235 Ring Bill Loop, Upper
`
`Marlboro, MD 20774.
`
`3.
`
`Applicant filed U.S. Trademark Application Serial No. 86914322 (the
`
`
`ACTIVE\44394530.v2-2/14/17
`
`1
`
`
`
`
`
`“Application”) seeking to register the mark “RACK SCOUT”, (the “Applicant’s Mark”) for
`
`the following services: “Retail on-line department stores; on-line retail store services
`
`featuring a wide variety of consumer goods; online retail store services featuring shoes;
`
`online retail store services featuring clothing, accessories, footwear, hats, belts, gloves,
`
`scarves, bags, handbags, packs, purses, luggage, briefcases, watches, jewelry,
`
`eyewear, home products, housewares, home décor, kitchen and cooking products,
`
`dishes, glassware, cutlery, bathroom products, cosmetics, beauty and personal care
`
`products, fragrances, skin and hair products, bedding and linens, baby goods, sporting
`
`goods, and storage and organization products”, in international class 35.
`
`4.
`
`The Application was filed on February 20, 2016, on the basis of “in use”
`
`and alleging a date of first use of June 30, 2013, and was later amended to the basis of
`
`“intent to use” which is the current basis for the Application.
`
`5.
`
`6.
`
`Applicant’s earliest priority date is February 20, 2016.
`
`Opposer is a famous youth organization in the United States. Beginning
`
`around February 8, 1910, and continuing to the present, Opposer has been engaged in
`
`the organization and management of programs for young people.
`
`7.
`
`Opposer adopted and began using marks incorporating the term “SCOUT”
`
`since as early as 1910 (Opposer’s marks and trade names incorporating “SCOUT”,
`
`registered and unregistered, are collectively referred to herein as “Opposer’s Scout
`
`Marks” or “Scout Marks”).
`
`8.
`
`Opposer operates various programs for boys and young men, which
`
`programs include CUB SCOUTS, BOY SCOUTS, SEA SCOUTS and EAGLE SCOUTS
`
`and which, in addition to the name Boys Scouts of America, SCOUTS, SCOUT, and
`
`
`ACTIVE\44394530.v2-2/14/17
`
`
`
`
`
`SCOUTING, are well known and famous names and identities of Opposer (the names
`
`and identities identified in this paragraph are collectively referred to herein as Opposer’s
`
`“Scout Names And Identities”). Opposer has used and/or been known by its Scout
`
`Names And Identities prior to the filing date of the Application, and before any date of
`
`actual first or constructive use which may be claimed by the Applicant.
`
`9.
`
`In addition to its various programs, BSA operates retail stores, including
`
`an online retail store at scoutstuff.org, which sells various goods and services in
`
`connection with its marks that contain the term “Scout”. These goods and services,
`
`including clothing, apparel, bags, cutlery, hats, drinkware, sleeping bags, personal care
`
`products, and watches among other goods, are offered to the general public.
`
`10. Opposer has used its Scout Marks in the United States long prior to the
`
`filing date of the Application, and long before the date of actual first use claimed by the
`
`Applicant.
`
`11.
`
`The United States Congress recognized the importance of protecting
`
`BSA’s marks from unauthorized use and granted the BSA the exclusive right to use its
`
`various marks with 36 U.S.C. § 30905, a federal statute, which provides that BSA “has
`
`the exclusive right to use emblems, badges, descriptive or designating marks, and
`
`words or phrases the corporation [BSA] adopts”.
`
`12. As an example of the protection provided by 36 U.S.C. §30905 in regard
`
`to Opposer's ownership of the mark BOY SCOUTS OF AMERICA, the United States
`
`Patent and Trademark Office (“PTO”) created U.S. Application Serial Nos. 89/000,095
`
`and 89/001,573, special records within the PTO indicating that this mark is protected for
`
`all classes of goods and services pursuant to the federal statute.
`
`
`ACTIVE\44394530.v2-2/14/17
`
`
`
`
`
`13. Opposer is also the owner of, and will also rely on herein, the following
`
`valid and subsisting United States trademark registrations which include trademarks,
`
`service marks, and collective marks (collectively, “Opposer’s Registered Scout Marks”):
`
`REG. DATE
`
`MARK/TYPE
`
`U.S. REG.
`NO.
`SCOUTSTUFF.ORG 4443273
`
`SCOUT SHOP
`BOY SCOUTS OF
`AMERICA
`
`1316207
`
`REPRESENTATIVE
`GOODS/SERVICES
`December 3, 2013 Online retail store services
`featuring clothing and apparel,
`literature, camping equipment,
`craft supplies, and home and gift
`wares
`January 22, 1985 Retail Store Services-Namely,
`the Sale of Boy Scout Uniforms,
`Boy Scout Insignias, Camping
`Equipment for Boy Scouts and
`Boy Scout Trophies and Awards
`Clothing, namely, shirts, t-shirts,
`hats, pants, jackets, swimwear,
`sleepwear
`Items of clothing forming part of a
`uniform consisting of dress shirts,
`t-shirts, pants, shorts, belts,
`socks, hats, and neckerchiefs
`Items of clothing forming part of a
`uniform consisting of shirts,
`pants, shorts, skirts, belts, socks,
`hats, and neckerchiefs
`Indication of membership in a
`scouting organization for young
`men
`Indicating membership in a
`scouting organization for boys
`To indicate membership in an
`organization for young men.
`Indicating membership in an
`organization for boys
`Educational services, namely, a
`co-educational program for
`young adults in the field of
`boating, sailing, rafting and
`scuba diving
`Indicating membership in a(n)
`organization for boys and young
`men
`
`SCOUTWEAR
`
`4731652 May 5, 2015
`
`CUB SCOUTS
`
`1215938
`
`BOY SCOUTS OF
`AMERICA
`
`1215939
`
`VARSITY SCOUT
`
`1370697
`
`SCOUTMASTER
`
`1695120
`
`November 9, 1982
`
`November 9, 1982
`
`November 12,
`1985
`
`June 16, 1992
`
`BOY SCOUTS OF
`AMERICA
`CUB SCOUTS
`
`SEA SCOUTS
`
`1363872 October 1, 1985
`
`1702357
`
`July 21, 1992
`
`2578122 March 19, 2002
`
`EAGLE SCOUT
`
`3877547
`
`
`ACTIVE\44394530.v2-2/14/17
`
`November 16,
`2010
`
`
`
`
`
`
`True and correct copies of the pleaded registrations taken from the U.S. Patent and
`
`Trademark Office’s database and showing the current status and title of the
`
`registrations are attached hereto as Exhibit A.
`
`14.
`
`In view of Opposer’s Registered Scout Marks, Opposer has priority in this
`
`Opposition.
`
`15. Opposer also has and will assert its common-law rights resulting from its
`
`ownership and use of its unregistered Scout Marks in connection with its various goods
`
`and services. Such marks include various trademarks, service marks, collective
`
`membership marks, and trade name uses, which uses have not been abandoned, are
`
`distinctive or have obtained secondary meaning, and which have been valid and
`
`continuous since a date prior to the filing date of the Application, prior to the claimed
`
`priority date, and prior to Applicant’s first use of its marks. Such common law Scout
`
`Marks include the following: (1) VARSITY SCOUT as used with clothing; (2) BOY
`
`SCOUTS OF AMERICA as used with clothing; (3) BOY SCOUT as used with clothing,
`
`personal care products, cutlery, drinkware, and watches (4) EAGLE SCOUT as used
`
`with clothing, drinkware, jewelry and cutlery; (5) CUB SCOUT as used with clothing,
`
`watches, cutlery, drinkware, and personal care products; and (6) SCOUTSTUFF.ORG
`
`as used in connection with retail services for clothing, bags, back packs, watches, hats,
`
`accessories, sporting goods, camping goods (including cooking stoves and utensils),
`
`drinkware, personal care items, and the like.
`
`16. Opposer also will assert its common law rights in its Scout Marks that it
`
`and/or the public have adopted, the use of which inures to Opposer’s benefit regardless
`
`of whether such marks are used by Opposer. Such marks include various trademarks,
`
`
`ACTIVE\44394530.v2-2/14/17
`
`
`
`
`
`service marks, collective membership marks, and trade name uses, which uses have
`
`not been abandoned, are distinctive or have obtained secondary meaning, and which
`
`have been valid and continuous since a date prior to the filing date of the Application,
`
`prior to the claimed priority date, and prior to Applicant’s first use of its marks. Such
`
`common law Scout Marks include the following: (1) SCOUT as used to identify a
`
`member of Opposer’s organization and Opposer’s goods and services; (2) SCOUTS as
`
`used to identify membership in Opposer’s organization, troops and units of Opposer,
`
`and goods and services of Opposer; (3) SCOUTING as used in association with
`
`Opposer’s organization, participation in Opposer’s programs and activities, and goods
`
`and services of Opposer; and (4) BOY SCOUTS as used in association with Opposer’s
`
`organization, and goods and services of Opposer.
`
`17. Opposer’s Scout Marks constitute a family of marks that include the term
`
`“SCOUT”.
`
`18. Opposer has established a valuable reputation and goodwill in its Scout
`
`Marks by reason of its long continuous use, extensive promotion, and sale of goods and
`
`rendering services utilized in association with its Scout Marks.
`
`19. As a result of Opposer’s long continuous use and extensive marketing
`
`efforts, Opposer’s Scout Marks are well known, and the public has come to associate
`
`Opposer with said Scout Marks.
`
`20. Applicant’s Mark as proposed for registration is substantially similar to
`
`Opposer’s Scout Marks.
`
`21.
`
`The services for which Applicant seek to register Applicant’s Mark are
`
`similar or related to the goods and services for which Opposer uses and/or has
`
`
`ACTIVE\44394530.v2-2/14/17
`
`
`
`
`
`registered its Scout Marks.
`
`
`
`FIRST GROUND FOR RELIEF
`EXCLUSIVE RIGHTS UNDER 36 U.S.C. §30905
`
`22. Opposer repeats and realleges each and every allegation set forth in
`
`paragraphs 1 through 21 herein.
`
`23. Congress, in 36 U.S.C. §30905, granted Opposer “the exclusive right to
`
`use emblems, badges, descriptive or designating marks, and words or phrases” that it
`
`adopts.
`
`24.
`
`The rights granted under 36 U.S.C. §30905 to Opposer include the
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`exclusive right to Opposer’s Scout Marks as used in the United States.
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`25. Applicant’s use and/or registration of Applicant’s Mark is in direct
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`contravention and derogation of the rights granted to Opposer by Congress.
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`
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`SECOND GROUND FOR RELIEF
`LIKELIHOOD OF CONFUSION – 15 U.S.C. 1052(d)
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`26. Opposer repeats and realleges each and every allegation set forth in
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`paragraphs 1 through 25 herein.
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`27. Relevant persons, including those persons for whom BSA’s collective
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`membership marks are displayed, are likely to believe that the services for which
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`Applicant seek to register Applicant’s Mark emanate from, are endorsed by, or are in
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`some way associated with BSA’s organization.
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`28. Applicant’s Mark so resembles Opposer’s Scout Marks, when used on or
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`in connection with Applicant’s services, as to be likely to cause confusion, or to cause
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`ACTIVE\44394530.v2-2/14/17
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`mistake, or to deceive.
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`
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`THIRD GROUND FOR RELIEF
`FALSE ASSOCIATION – 15 U.S.C. 1052(a)
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` Opposer repeats and realleges each and every allegation set forth in
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`29.
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`paragraphs 1 through 28 herein.
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`30. Applicant’s Mark is the same as or a close approximation of Opposer’s
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`Scout Names and Identities as identified above.
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`31. Applicant’s Mark, when used on or in connection with Applicant’s services,
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`would be viewed by consumers as pointing uniquely and unmistakably to Opposer.
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`32. Opposer is not connected with the services sold or rendered by Applicant
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`under Applicant’s Mark.
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`33. The fame or reputation of Opposer is of such a nature that a connection
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`with Opposer would be presumed by consumers when Applicant’s Mark is used in
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`connection with its services.
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`
`
`FOURTH GROUND FOR RELIEF
`DILUTION – 15 U.S.C. 1125(c)
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`34. Opposer repeats and realleges each and every allegation set forth in
`
`paragraphs 1 through 33 herein.
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`35. Opposer’s Scout Marks are distinctive and famous.
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`36. Opposer’s Scout Marks have been famous from a time prior to the filing
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`date of the Application, from a time prior to the claimed priority date, and from a time
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`prior to Applicant’s first use of Applicant’s Mark.
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`ACTIVE\44394530.v2-2/14/17
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`37. Applicant’s Mark is likely to cause dilution by blurring the distinctive quality
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`of Opposer’s Scout Marks.
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`38.
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`If Applicant were granted registration of the Application herein opposed,
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`they would thereby obtain at least a prima facie exclusive right to the use of Applicant’s
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`Mark. For the reasons set forth above, such registration would be a source of damage
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`and injury to Opposer.
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`WHEREFORE, Opposer prays that its opposition to the registration of U.S.
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`Trademark Application Serial No. 86914322 be sustained and that Applicant’s Mark be
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`
`
`Respectfully submitted,
`/gah/
`
`
`Gary A. Hecht
`Christopher D. Olszyk, Jr.
`Fox Rothschild LLP
`2000 Market Street, 20th Floor
`Philadelphia, PA 19103
`(215) 299-2416
`
`
`
`
`
`ATTORNEYS FOR OPPOSER
`
`
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`
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`refused registration.
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`
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`
`
`Dated: February 10, 2017
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`ACTIVE\44394530.v2-2/14/17
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`In re Application Serial No. 86914322
`
`For the mark: “RACK SCOUT”
`
`Opposition No. _________
`
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`EXHIBIT A
`
`
`
`Boy Scouts of America,
`
`
`
`Opposer,
`
`
`
`
`
`CCG Creative, LLC
`
`
`
`Applicant.
`
`v.
`
`
`
`
`
`
`
`
`ACTIVE\44394530.v2-2/14/17
`
`
`
`Trademark Electronic Search System (TESS)
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` SCOUTSTUFF.ORG
`IC 035. US 100 101 102. G & S: Online retail store services featuring clothing and apparel, literature, camping
` equipment, craft supplies, and home and gift wares. FIRST USE: 20050701. FIRST USE IN COMMERCE: 20050701
`
`Word Mark
`
`Goods and
` Services
`
`Standard
` Characters
` Claimed
`
`(4) STANDARD CHARACTER MARK
`
`Mark Drawing
` Code
`Serial Number 85902497
`April 12, 2013
`Filing Date
`Current Basis 1A
`
`Original Filing
` Basis
`
`1A
`
`Published for
` Opposition
`
`Registration
` Number
`
`Registration
` Date
`
`Owner
`
`Attorney of
` Record
`
`Prior
` Registrations
`
`Type of Mark
`
`Register
`
`Live/Dead
`
` September 17, 2013
`
`4443273
`
`December 3, 2013
`
`(REGISTRANT) Boy Scouts of America UNITED STATES FEDERALLY CHARTERED CORPORATION UNITED
` STATES P.O. Box 152079 1325 West Walnut Hill Lane Irving TEXAS 750152079
`
`Lisa B. Lane, Esq.
`
`1215939;2153107;2197815;AND OTHERS
`
`SERVICE MARK
`PRINCIPAL
`
`LIVE
`
`http://tmsearch.uspto.gov/bin/showfield?f=doc&state=4808:zzamul.2.1[2/13/2017 4:10:33 PM]
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`Word Mark
`
` SCOUT SHOP BOY SCOUTS OF AMERICA
`
`Goods and
` Services
`
`IC 042. US 101. G & S: Retail Store Services-Namely, the Sale of Boy Scout Uniforms, Boy Scout Insignias, Camping
` Equipment for Boy Scouts and Boy Scout Trophies and Awards. FIRST USE: 19811114. FIRST USE IN COMMERCE:
` 19811114
`
`Mark
` Drawing
` Code
`
`Serial
` Number
`
`(1) TYPED DRAWING
`
`73341411
`
`Filing Date
`
`December 14, 1981
`
`Current
` Basis
`
`Original
` Filing Basis
`
`Published for
` Opposition
`
`Registration
` Number
`
`Registration
` Date
`
`Owner
`
`Attorney of
` Record
`
`Prior
` Registrations
`
`1A
`
`1A
`
` November 13, 1984
`
`1316207
`
`January 22, 1985
`
`(REGISTRANT) BOY SCOUTS OF AMERICA CORPORATION UNITED STATES P.O. BOX 152079 1325 WALNUT
` HILL LANE IRVING TEXAS 750152079
`
`RICHARD C WOODBRIDGE, ESQ.
`
`1197851;1245661;AND OTHERS
`
`Disclaimer
`
`No claim is made to the exclusive right to use the words "Scout"; "Shop", apart from the mark as shown.
`
`Type of Mark SERVICE MARK
`
`Register
`
`PRINCIPAL-2(F)
`
`Affidavit Text SECT 15. SECT 8 (6-YR). SECTION 8(10-YR) 20150128.
`
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`Renewal
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`2ND RENEWAL 20150128
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`LIVE
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`Word Mark
`
`Goods and
` Services
`
`Standard
` Characters
` Claimed
`
`Mark Drawing
` Code
`
` SCOUTWEAR
`
`IC 025. US 022 039. G & S: Clothing, namely, shirts, t-shirts, hats, pants, jackets, swimwear, sleepwear. FIRST
` USE: 20101100. FIRST USE IN COMMERCE: 20101100
`
`(4) STANDARD CHARACTER MARK
`
`Serial Number
`
`86470349
`
`Filing Date
`
`December 3, 2014
`
`Current Basis
`
`Original Filing
` Basis
`
`Published for
` Opposition
`
`Registration
` Number
`
`1A
`
`1A
`
` February 17, 2015
`
`4731652
`
`Registration Date May 5, 2015
`
`Owner
`
`Attorney of
` Record
`
`(REGISTRANT) Boy Scouts of America united states federally chartered corporation (title 36) UNITED STATES
` P.O. Box 152079 1325 West Walnut Hill Lane Irving TEXAS 750152079
`
`Richard C. Woodbridge,
`
`Type of Mark
`
`TRADEMARK
`
`Register
`
`Live/Dead
`
`PRINCIPAL
`
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`Word Mark
`
` CUB SCOUTS
`
`Goods and
` Services
`
`IC 025. US 039. G & S: Items of Clothing Forming Part of a Uniform Consisting of Dress Shirts, T-Shirts, Pants, Shorts,
` Belts, Socks, Hats, and Neckerchiefs. FIRST USE: 19300401. FIRST USE IN COMMERCE: 19300401
`
`Mark
` Drawing
` Code
`
`Serial
` Number
`
`(1) TYPED DRAWING
`
`73297299
`
`Filing Date
`
`February 17, 1981
`
`Current
` Basis
`
`Original
` Filing Basis
`
`Published
` for
` Opposition
`
`Registration
` Number
`
`Registration
` Date
`
`Owner
`
`Attorney of
` Record
`
`1A
`
`1A
`
` August 17, 1982
`
`1215938
`
`November 9, 1982
`
`(REGISTRANT) Boy Scouts of America federally charter