Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA821578
`05/17/2017
`
`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
`
`Acushnet Company
`
`Granted to Date
`of previous ex-
`tension
`
`Address
`
`Attorney informa-
`tion
`
`05/27/2017
`
`333 Bridge Street
`Fairhaven, MA 02719
`UNITED STATES
`
`Nancy H. Lutz
`Merchant & Gould P.C.
`P.O. Box 2910
`Minneapolis, MN 55402
`UNITED STATES
`SJohnston@merchantgould.com, NLutz@MerchantGould.com, PCole-
`man@MerchantGould.com, DOCKMPLS@merchantgould.com, TM-
`dept@acushnetgolf.com
`
`Applicant Information
`
`Application No
`
`85428865
`
`Publication date
`
`03/28/2017
`
`Opposition Filing
`Date
`
`Applicant
`
`05/17/2017
`
`Opposition Peri-
`od Ends
`
`05/27/2017
`
`Woodworth, Jeffrey William
`4946 Watt Avenue Unit #28
`North Highlands, CA 95660
`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: Hats; T-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.
`
`316118
`
`Registration Date
`
`08/14/1934
`
`Application Date
`
`05/04/1934
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Word Mark
`
`Design Mark
`
`TITLEIST
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 028. First use: First Use: 1933/12/20 First Use In Commerce: 1933/12/20
`GOLF BALLS
`
`U.S. Registration
`No.
`
`1155766
`
`Registration Date
`
`05/26/1981
`
`Word Mark
`
`Design Mark
`
`TITLEIST
`
`Application Date
`
`09/10/1979
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 028. First use: First Use: 1933/12/20 First Use In Commerce: 1933/12/00
`Golf Equipment-Namely, Golf Balls, GolfClubs and Golf Bags
`
`U.S. Registration
`No.
`
`934406
`
`Registration Date
`
`05/23/1972
`
`Application Date
`
`11/23/1970
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`TITLEIST
`
`NONE
`
`Class 028. First use: First Use: 1933/12/00 First Use In Commerce: 1933/12/00
`GOLF EQUIPMENT COMPRISING GOLF BALLS, GOLF CLUBS, GOLF BAGS,
`GOLF GLOVES AND GOLF HEADCOVERS
`
`U.S. Registration
`No.
`
`933271
`
`Registration Date
`
`05/02/1972
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`TITLEIST
`
`NONE
`
`Application Date
`
`02/08/1971
`
`Foreign Priority
`Date
`
`NONE
`
`Goods/Services
`
`Class 025. First use: First Use: 1970/01/00 First Use In Commerce: 1970/01/00
`
`

`

`CLOTHING, MORE SPECIFICALLY, SWEATERS, SHIRTS, AND JACKETS
`
`U.S. Registration
`No.
`
`3176825
`
`Registration Date
`
`11/28/2006
`
`Word Mark
`
`Design Mark
`
`TITLEIST
`
`Application Date
`
`12/28/2005
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 025. First use: First Use: 1970/01/00 First Use In Commerce: 1970/01/00
`headwear
`
`U.S. Registration
`No.
`
`1273662
`
`Registration Date
`
`04/10/1984
`
`Word Mark
`
`Design Mark
`
`TITLEIST
`
`Application Date
`
`01/31/1983
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 025. First use: First Use: 1970/01/00 First Use In Commerce: 1970/01/00
`Clothing-Namely, Shirts
`
`U.S. Registration
`No.
`
`1601034
`
`Registration Date
`
`06/12/1990
`
`Application Date
`
`10/11/1988
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`TITLEIST #1 BALL IN GOLF.
`
`

`

`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 028. First use: First Use: 1978/00/00 First Use In Commerce: 1978/00/00
`GOLF BALLS
`
`U.S. Registration
`No.
`
`4295551
`
`Registration Date
`
`02/26/2013
`
`Word Mark
`
`Design Mark
`
`TEAM TITLEIST
`
`Application Date
`
`07/10/2012
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 016. First use: First Use: 2010/10/00 First Use In Commerce: 2010/10/00
`Stickers
`Class 024. First use: First Use: 2010/10/00 First Use In Commerce: 2010/10/00
`Golf towels
`Class 025. First use: First Use: 2010/10/00 First Use In Commerce: 2010/10/00
`Golf caps; Golf shirts; T-shirts
`Class 028. First use: First Use: 2010/08/00 First Use In Commerce: 2010/08/00
`Golf balls
`Class 041. First use: First Use: 2010/03/08 First Use In Commerce: 2010/03/08
`Providing a website featuring blogs andnon-downloadable publications in the
`nature of instructional videos in the field(s) of golf
`
`Attachments
`
`71350879#TMSN.png( bytes )
`73230709#TMSN.png( bytes )
`78781730#TMSN.png( bytes )
`73411655#TMSN.png( bytes )
`73756857#TMSN.png( bytes )
`85672974#TMSN.png( bytes )
`Acushnet - FINAL NOO v Woodworth THE ILLEST Script.pdf(1277438 bytes )
`
`Signature
`
`/Nancy H. Lutz/
`
`

`

`m NancyH-Lutz
`Nancy H. Lutz
`Name
`05/17/2017
`Date
`05/17/2017
`
`

`

`
`
`
`
`
`
`
`
`
`
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`ACUSHNET COMPANY,
`
`
`Opposer,
`
`v.
`
`
`JEFFREY WILLIAM WOODWORTH,
`
`
`Applicant.
`
`Opposition No. ___________
`
`
`
`
`Ser. No. 85/428865
`
`Filed: September 22, 2011
`
`
`
`Published: March 28, 2017
`
`NOTICE OF OPPOSITION
`
`Acushnet Company ("Opposer"), a Delaware corporation, located at 333 Bridge
`
`Street, Fairhaven, Massachusetts 02719, believes that it is and will be damaged by the
`
`registration of the mark
`
`, shown in Application Serial No. 85/428865
`
`(“Applicant’s Mark” or “
`
`”), fi l ed on S ept ember 22, 2011, b y J ef fre y
`
`W i l l i am W oodwort h ("Applicant"), an individual with an address of 4946 Watt
`
`Avenue, Unit #28, North Highlands, California 95660, and hereby opposes the same.
`
`As grounds for opposition, it is alleged that:
`
`1.
`
`Applicant is seeking to register the trademark
`
` for “Hats; T-
`
`shirts” in Cl. 25 under the provisions of the Trademark Act of 1946 as amended.
`
`2.
`
`Applicant’s Mark was published for opposition on March 28, 2017, and
`
`Opposer filed and the Trademark Trial and Appeal Board approved an extension of time to
`
`oppose Applicant’s Mark until May 27, 2017. This Notice of Opposition is timely filed.
`
`11255335_1
`
`1
`
`

`

`
`
`3.
`
`Opposer, is now and has for many years, been engaged in the business of
`
`manufacturing, marketing, and selling a wide variety of golf equipment, golf apparel, and
`
`golf accessories under the famous TITLEIST mark.
`
`4.
`
`Since at least as early as 1933, over three quarters of a century prior to
`
`S ept em ber 22, 2011, when Appl i cant fi led hi s i nt ent -t o-use appl i cati on, a
`
`predecessor of Opposer adopted and began to use TITLEIST as a trademark for golf
`
`balls of superior quality and performance. The TITLEIST product range has since
`
`expanded to cover a wide range of goods sold worldwide under the TITLEIST mark,
`
`including golf clubs, golf bags, golf headcovers, h a t s , v i s o r s , shirts, gloves,
`
`umbrellas, towels, backpacks, travel and duffel bags, and more.
`
`5.
`
`Opposer's TITLEST m ark has been used on and in connection with such
`
`goods continuously since its date of first use, and Opposer's products marked as
`
`TITLEST have been promoted, advertised, shipped, distributed, and sold in interstate
`
`commerce throughout the United States continuously for said period of time.
`
`6.
`
`The unique script in which Opposer uses its TITLEIST mark originated when
`
`the first TITLEIST-branded golf balls were produced in the 1930s. Company executives
`
`wanted to develop a unique stylization for the TITLEIST mark and remembered the
`
`handwriting of office secretary Helen Robinson, an individual considered to have excellent
`
`penmanship. She was given a sheet of paper and asked to write “TITLEIST” on it. The
`
`stylization in which she wrote it on that paper over seventy years ago is virtually identical to
`
`how the popular script
`
` mark, which has been registered in many countries,
`
`continues to appear to this day on every TITLEIST product in the United States and
`
`11255335_1
`
`2
`
`

`

`
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`throughout the world.
`
` 7.
`
`For over seven decades, and well before September 22, 2011, when Applicant
`
`filed his intent-to-use application, Opposer has drawn upon the extensive goodwill and
`
`public recognition of its TITLEST mark (TITLEST together with its stylized form
`
`, a r e r e f e r r e d t o h e r e i n a s O p p o s e r ’ s “ T I T L E I S T M a r k ” )
`
`by adopting and using marks comprised in part or in whole of TITLEIST for a wide variety
`
`of golf equipment, golf apparel, golf accessories, and golf related services.
`
` 8.
`
`Opposer has registered its TITLEIST Mark a n d m a r k s
`
`c o m p r i s e d i n p a r t o f t h e m with the United States Patent and
`
`Trademark Office ("USPTO") as set forth below.
`
`
`
`Mark
`
`Reg. No. Reg. Date
`316118 August 14,
`1934
`1155766 May 26,
`1981
`
`First Use
`December
`20, 1933
`December,
`1933
`
`
`
`
`
`TITLEIST
`
`934406 May 23,
`1972
`
`December,
`1933
`
`TITLEIST
`
`933271 May 2, 1972
`
`TITLEIST
`
`
`
`3176825 November
`28, 2006
`1273662 April 10,
`1984
`June 12,
`1990
`
`1601034
`
`January,
`1970
`
`January,
`1970
`January,
`1970
`1978
`
`Goods/Services
`Class 28: golf balls
`
`Class 28: golf equipment-
`namely, golf balls, golf clubs
`and golf bags
`Class 28: golf equipment
`comprising golf balls, golf
`clubs, golf bags, golf gloves
`and golf headcovers
`Class 25: clothing, more
`specifically, sweaters, shirts,
`and jackets
`Class 25: headwear
`
`Class 25: clothing-namely,
`shirts
`Class 28: golf balls
`
`TEAM TITLEIST
`
`
`
`4295551 February 26,
`2013
`
`March 8,
`2010
`(Class 41)
`
`Class 16: stickers
`
`Class 24: golf towels
`
`11255335_1
`
`3
`
`

`

`
`
`Mark
`
`Reg. No. Reg. Date
`
`First Use
`
`August,
`2010
`(Class 28)
`
`October,
`2010
`(Classes 16,
`24 & 25)
`
`Goods/Services
`
`Class 25: golf caps; golf
`shirts; t-shirts
`
`Class 28: golf balls
`
`Class 41: providing a website
`featuring blogs and non-
`downloadable publications in
`the nature of instructional
`videos in the field(s) of golf
`
`
`
`
`TSDR printouts of the electronic database records of the USPTO showing the current status
`
`and title of the registrations listed in the above table are attached as Exhibit A.
`
`
`
`9.
`
`The registrations listed in the above table have not been canceled, are valid, and
`
`are now in full force and effect.
`
`10.
`
`Except for the registration for TEAM TITLEIST, Reg. No. 4295551, the
`
`registrations in Exhibit A are incontestable under Section 15 of the Lanham Act, 15 U.S.C. §
`
`1065. Consequently, these registrations are conclusive evidence of the validity of the
`
`registered marks, the registration of them, Opposer's ownership of the marks, and Opposer's
`
`exclusive right to use the registered marks in commerce under Section 33 of the Lanham Act,
`
`15 U.S.C. § 1115.
`
`
`
`11.
`
`Products marked with the TITLEIST Mark have been widely promoted,
`
`advertised, shipped, distributed and sold in interstate commerce, and the TITLEIST
`
`Mark is recognized and relied upon as identifying Opposer's goods and services and as
`
`distinguishing them from the goods and services of others. Consequently, the TITLEIST
`
`Mark has developed considerable goodwill and come to represent an extremely valuable
`
`11255335_1
`
`4
`
`

`

`
`
`
`
`a s s e t and business belonging exclusively to Opposer.
`
`12.
`
`Opposer’s TITLEIST Mark is famous within the meaning of Section 43(c) of
`
`the Lanham Act, 15 U.S.C. § 1125(c), and became famous prior to the filing dates of
`
`Applicant’s application.
`
`
`
`13.
`
`There is no issue of priority concerning Applicant’s Mark since Opposer owns
`
`incontestable federal registrations for the TITLEIST Mark. In addition, Opposer has priority
`
`because Opposer used and registered its TITLEIST Mark prior to Applicant’s S ept em ber
`
`22, 2011filing date. Opposer’s use of Opposer’s TITLEIST Mark commenced at least as
`
`early as 1933, over 75 years prior to Applicant’s filing date. Opposer owns a registration that
`
`registered in 1934, again, over 75 years before Applicant filed his application. Therefore,
`
`Opposer has priority over Applicant with respect to the marks at issue.
`
`
`
`14.
`
`In addition to registrations for the TITLEIST Mark, including
`
`,
`
`Reg. No. 1601034, Opposer owns an incontestable registration for #1 ball in golf, Reg. No.
`
`3943732, for “golf balls”, registered April 12, 2011, claiming a date of first use and first use
`
`in commerce as of 1978. A TSDR printout of the electronic database records of the USPTO
`
`showing the current status and title of this registration is attached as Exhibit B.
`
`
`
`15.
`
`Upon information and belief, Applicant owns the Facebook page
`
`https://www.facebook.com/jeff.woodworth.10 where he uploaded the following promotional
`
`materials at
`
`https://www.facebook.com/jeff.woodworth.10/photos?lst=25500383%3A100000409632337
`
`%3A1488827969&source_ref=pb_friends_tl on September 21, 2011. Attached as Exhibit C
`
`is a printout of relevant pages of Applicant’s Facebook page.
`
`11255335_1
`
`5
`
`

`

`
`
`
`
`
`
` Therefore, upon information and belief, Applicant had knowledge of the fact that Opposer
`
`used Opposer’s TITLEIST Mark,
`
`, and #1 ball in golf as trademarks
`
`before he adopted his mark in bad faith.
`
`16.
`
`Applicant's Mark is confusingly and deceptively similar to Opposer's
`
`previously used and duly registered TITLEIST Mark, especially since Applicant directly
`
`copied the handwritten stylization of Opposer’s
`
`for Applicant’s
`
`
`
`mark. In fact, the stylization is so similar that it is likely to create the same commercial
`
`impression to consumers, particularly when coupled to the “1 in disc golf” slogan as shown
`6
`
`11255335_1
`
`

`

`
`
`
`
`in Exhibit C.
`
`17.
`
`The goods and services marketed and provided by Opposer under Opposer’s
`
`TITLEIST Mark are identical or closely related to the goods listed in Applicant's application.
`
`Specifically, both parties’ goods include hats and shirts. In addition, Applicant’s use is
`
`directed to the sport of disc golf, which shares many attributes with golf and consumers are
`
`likely to believe that makers of TITLEST are affiliated, sponsor, or endorse Applicant and its
`
`products when the same is not true.
`
`18.
`
`Upon information and belief, Opposer's goods and services and Applicant's
`
`goods are promoted and sold in similar channels of trade to the same consumers or class of
`
`consumers.
`
`19.
`
`Applicant’s Mark is nearly identical in appearance, sound, and commercial
`
`impression to Opposer’s TITLEIST Mark.
`
`20.
`
`Due to the similarity between Applicant’s claimed mark and Opposer’s
`
`previously used and duly registered TITLEIST Mark, the closely related nature of the goods
`
`and services of the respective parties, customers and potential customers are likely to believe
`
`that Applicant’s goods originate from Opposer, resulting in a likelihood of confusion in the
`
`marketplace and damage to Opposer.
`
`21.
`
`The use and registration by Applicant of Applicant’s Mark for Applicant’s
`
`goods is likely to cause confusion or to cause mistake or deception in the trade, and among
`
`purchasers and potential purchasers, with Opposer’s previously used and duly registered
`
`TITLEIST Mark, again resulting in damage to Opposer.
`
`22.
`
`Because of the closely related nature of the goods and services, and the
`
`similarity of the marks, use and registration of the Applicant’s Mark by Applicant is likely to
`
`11255335_1
`
`7
`
`

`

`cause confu sion, m istake, or deception that Applicant's goods are those of Opposer, or are
`
`otherw ise endorsed, sponsored, or appro ved by Opposer fo r use w ith Opposer's pro ducts and
`
`serv ices causing further dam age to Opposer.
`
`23.
`
`A pplicant's use and registration of the Applicant's M ark is likely to dilute the
`
`distinctive quality of Opposer's fam ous TITLEIST M ark, again resulting in dam age to
`
`Opposer.
`
`24.
`
`If Applicant is granted registration of the mark herein opposed, it would
`
`
`
`thereby obtain at least a zyxwvutsrqponmlkjihgfedcbaZYXWVUTSRQPONMLKJIHGFEDCBAprima facie exclusive right to the use of its alleged mark. Such
`
`registrations would be a source of further damage and injury to Opposer.
`
`25.
`
`Registration of the mark shown in Application Serial No. 85/428865 will result
`
`in damage to Opposer under the provisions of Sections 2 and 43( c) of the Lanham Act, 15
`
`U.S.C. §§ 1052 and 1125, pursuant to the allegations stated above.
`
`WHEREFORE, Opposer requests that the registration sought by Applicant in
`
`Application Serial No. 85/428865 be refused and that this Notice of Opposition be sustained.
`
`\-:\--
`May_, 2017
`
`By:
`
`11255335_ 1
`
`Respectfully submitted,
`
`Scott W. Johnston
`Nancy H. Lutz
`MERCHANT & GOULD P.C.
`80 South Eighth Street, Suite 3200
`Minneapolis, MN 55402-2215
`(612) 332-5300
`
`Attorneys for Opposer
`ACUSHNET COMPANY
`
`8
`
`

`

`C E R T I F I C A T E O F S E R V I C E zyxwvutsrqponmlkjihgfedcbaZYXWVUTSRQPONMLKJIHGFEDCBA
`
`I hereby certify that a true and correct copy of the foregoing NOTICE OF
`
`OPPOSITION was served upon Applicant (no attorney of record) by First Class Mail, postage
`
`l:\- day of May, 2017:
`prepaid, this zyxwvutsrqponmlkjihgfedcbaZYXWVUTSRQPONMLKJIHGFEDCBA
`
`Jeffrey William Woodworth
`4946 Watt Avenue, Unit #28
`North Highlands, CA 95660. zyxwvutsrqponmlkjihgfedcbaZYXWVUTSRQPONMLKJIHGFEDCBA
`
`11 2 5 5 3 3 5 _ 1
`
`

`

`
`
`
`
`EXHIBIT A
`EXHIBIT A
`
`
`
`
`
`
`
`1 1255335_1
`11255335_1
`
`
`
`
`
`
`
`

`

`Generated on: This page was generated by TSDR on 2017-05-09 14:45:30 EDT
`
`Mark: TITLEIST
`
`US Serial Number: 71350879
`
`US Registration
`Number:
`
`316118
`
`Register: Principal
`
`Mark Type: Trademark
`
`Status: The registration has been renewed.
`
`Status Date: May 16, 2014
`
` 
`
`Mark Literal
`Elements:
`
`TITLEIST
`
`Standard Character
`Claim:
`
`No
`
`Application Filing
`Date:
`
`May 04, 1934
`
`Registration Date: Aug. 14, 1934
`
`Mark Information
`
`Mark Drawing
`Type:
`
`5 - AN ILLUSTRATION DRAWING WITH WORD(S) /LETTER(S)/ NUMBER(S) INSTYLIZED FORM
`
`Related Properties Information
`
`Publish Previously
`Registered Mark:
`
`Yes
`
`Previously
`Registered Mark
`Publication Date:
`
`Apr. 04, 1950
`
`Goods and Services
`
`Note: The following symbols indicate that the registrant/owner has amended the goods/services:
`
`Brackets [..] indicate deleted goods/services;
`Double parenthesis ((..)) identify any goods/services not claimed in a Section 15 affidavit of incontestability; and
`Asterisks *..* identify additional (new) wording in the goods/services.
`
`For: GOLF BALLS
`
`International
`Class(es):
`
`028
`
`Class Status: ACTIVE
`
`Basis: 1(a)
`
`U.S Class(es): 022 - Primary Class
`
`First Use: Dec. 20, 1933
`
`Use in Commerce: Dec. 20, 1933
`
`Basis Information (Case Level)
`
`Filed Use: Yes
`
`Filed ITU: No
`
`Filed 44D: No
`
`Filed 44E: No
`
`Filed 66A: No
`
`Currently Use: Yes
`
`Currently ITU: No
`
`Currently 44D: No
`
`Currently 44E: No
`
`Currently 66A: No
`
`Amended Use: No
`
`Amended ITU: No
`
`Amended 44D: No
`
`Amended 44E: No
`
`Filed No Basis: No
`
`Currently No Basis: No
`
`Current Owner(s) Information
`
`Owner Name: ACUSHNET COMPANY
`
`Owner Address: 333 BRIDGE STREET
`
`

`

`FAIRHAVEN, MASSACHUSETTS
`UNITED STATES
`
`Legal Entity Type: CORPORATION
`
`State or Country
`Where Organized:
`
`DELAWARE
`
`Attorney/Correspondence Information
`
`Attorney of Record - None
`
`Correspondent
`
`Correspondent
`Name/Address:
`
`Lisa Rogan
`ACUSHNET COMPANY
`333 BRIDGE STREET
`FAIRHAVEN, MASSACHUSETTS 02719
`UNITED STATES
`
`Phone: 508-979-2000
`
`Correspondent e-
`mail:
`
`TMdept@acushnetgolf.com andrea_sorell@acush
`netgolf.com lisa_rogan@acushnetgolf.com nlutz@
`kelleydrye.com
`
`Correspondent e-
`mail Authorized:
`
`Yes
`
`Domestic Representative - Not Found
`
`Prosecution History
`
`Date
`
`Description
`
`Sep. 28, 2016
`
`ASSIGNMENT OF OWNERSHIP NOT UPDATED AUTOMATICALLY
`
`May 16, 2014
`
`NOTICE OF ACCEPTANCE OF SEC. 8 & 9 - E-MAILED
`
`May 16, 2014
`
`REGISTERED AND RENEWED (FIFTH RENEWAL - 10 YRS)
`
`May 16, 2014
`
`REGISTERED - SEC. 8 (10-YR) ACCEPTED/SEC. 9 GRANTED
`
`May 09, 2014
`
`REGISTERED - COMBINED SECTION 8 (10-YR) & SEC. 9 FILED
`
`May 09, 2014
`
`TEAS CHANGE OF CORRESPONDENCE RECEIVED
`
`May 09, 2014
`
`TEAS SECTION 8 & 9 RECEIVED
`
`Jun. 29, 2009
`
`REVIEW OF CORRESPONDENCE COMPLETE
`
`Sep. 26, 2008
`
`CASE FILE IN TICRS
`
`May 05, 2006
`
`TEAS CHANGE OF CORRESPONDENCE RECEIVED
`
`Sep. 18, 2004
`
`REGISTERED AND RENEWED (FOURTH RENEWAL - 10 YRS)
`
`Sep. 18, 2004
`
`REGISTERED - SEC. 8 (10-YR) ACCEPTED/SEC. 9 GRANTED
`
`Aug. 12, 2004
`
`REGISTERED - COMBINED SECTION 8 (10-YR) & SEC. 9 FILED
`
`Aug. 12, 2004
`
`TEAS SECTION 8 & 9 RECEIVED
`
`Mar. 04, 2004
`
`PAPER RECEIVED
`
`Jan. 21, 2004
`
`TEAS CHANGE OF CORRESPONDENCE RECEIVED
`
`Sep. 28, 1994
`
`REGISTERED AND RENEWED (THIRD RENEWAL - 10 YRS)
`
`Aug. 29, 1994
`
`RESPONSE RECEIVED TO POST REG. ACTION
`
`Jul. 29, 1994
`
`REGISTERED - SEC. 9 FILED/CHECK RECORD FOR SEC. 8
`
`Jul. 21, 1994
`
`POST REGISTRATION ACTION MAILED - SEC. 9
`
`Feb. 18, 1994
`
`REGISTERED - SEC. 9 FILED/CHECK RECORD FOR SEC. 8
`
`Aug. 14, 1974
`
`REGISTERED AND RENEWED (SECOND RENEWAL - 20 YRS)
`
`Maintenance Filings or Post Registration Information
`
`Affidavit of
`Continued Use:
`
`Affidavit of
`Incontestability:
`
`Section 8 - Accepted
`
`Section 15 - Accepted
`
`Renewal Date: Aug. 14, 2014
`
`TM Staff and Location Information
`
`TM Staff Information - None
`
`File Location
`
`Current Location: GENERIC WEB UPDATE
`
`Date in Location: May 16, 2014
`
`Proceeding
`Number
`
`75461
`
`75461
`
`75461
`
`61619
`
`

`

`Assignment Abstract Of Title Information
`
`Summary
`
`Total Assignments: 6
`
`Conveyance: CHANGE OF NAME 19680604
`
`Reel/Frame: 0169/0669
`
`Date Recorded: Dec. 30, 1968
`
`Supporting
`Documents:
`
`No Supporting Documents Available
`
`Assignment 1 of 6
`
` 
`
`Registrant: ACUSHNET PROCESS COMPANY
`
`Pages: 5
`
`Name: ACUSHNET PROCESS COMPANY
`
`Execution Date: Jun. 14, 1968
`
`Assignor
`
`Legal Entity Type: UNKNOWN
`
`Name: ACUSHNET COMPANY
`
`Legal Entity Type: UNKNOWN
`
`Address: No Assignee Address Found
`
`Correspondent
`Name:
`
`FYRE, MANN, ET AL.
`
`Correspondent
`Address:
`
`155 E. 44TH ST.
`NEW YORK, NY 10017
`
`State or Country
`Where Organized:
`
`Assignee
`
`No Place Where Organized Found
`
`State or Country
`Where Organized:
`
`No Place Where Organized Found
`
`Correspondent
`
`Conveyance: ASSIGNS THE ENTIRE INTEREST AND THE GOODWILL
`
`Domestic Representative - Not Found
`
`Assignment 2 of 6
`
`Reel/Frame: 0244/0678
`
`Date Recorded: Nov. 28, 1973
`
`Supporting
`Documents:
`
`No Supporting Documents Available
`
`Pages: 1
`
`Assignor
`
`Name: AEROCHEM N.V.
`
`Execution Date: Nov. 22, 1973
`
`Legal Entity Type: A LIMITED LIABILITY COMPANY
`
`Name: AEROFAKO B.V.
`
`Legal Entity Type: A PRIVATE LIMITED LIABILITY COMPANY
`
`State or Country
`Where Organized:
`
`Assignee
`
`NETHERLANDS ANTILLES
`
`State or Country
`Where Organized:
`
`NETHERLANDS
`
`Address: VLIJTSEWEG 130
`APELDOORN, HOLLAND, NONE
`
`Correspondent
`Name:
`
`HASELTINE, LAKE & WATERS
`
`Correspondent
`Address:
`
`19 WEST 44TH STREET
`NEW YORK, NY 10036
`
`Correspondent
`
`Domestic Representative - Not Found
`
`Assignment 3 of 6
`
`Conveyance: MERGER AND CHANGE OF NAME 19760604DE
`
`Reel/Frame: 0304/0710
`
`Date Recorded: Mar. 21, 1977
`
`Supporting
`Documents:
`
`No Supporting Documents Available
`
`Pages: 1
`
`Assignor
`
`

`

`Name: ACUSHNET COMPANY, -MERGED INTO-
`
`Execution Date: Feb. 14, 1977
`
`Legal Entity Type: CORPORATION
`
`State or Country
`Where Organized:
`
`MASSACHUSETTS
`
`Name: AMERICAN ACUSHNET COMPANY, -CHANGED
`TO-
`
`Execution Date: Not Found
`
`Legal Entity Type: CORPORATION
`
`State or Country
`Where Organized:
`
`DELAWARE
`
`Assignee
`
`Name: AMERICAN ACUSHNET COMPANY, -CHANGED TO-
`
`Legal Entity Type: CORPORATION
`
`Address: No Assignee Address Found
`
`Name: ACUSHNET COMPANY
`
`Legal Entity Type: UNKNOWN
`
`Address: No Assignee Address Found
`
`Correspondent
`Name:
`
`ROGERS HOGE & HILLS
`
`Correspondent
`Address:
`
`90 PARK AVENUE
`NEW YORK, NY 10016
`
`Conveyance: SECURITY INTEREST
`
`Reel/Frame: 4673/0710
`
`Date Recorded: Dec. 08, 2011
`
`Supporting
`Documents:
`
`assignment-tm-4673-0710.pdf
`
`State or Country
`Where Organized:
`
`DELAWARE
`
`State or Country
`Where Organized:
`
`No Place Where Organized Found
`
`Correspondent
`
`Domestic Representative - Not Found
`
`Assignment 4 of 6
`
`Pages: 23
`
`Name: ACUSHNET COMPANY
`
`Execution Date: Oct. 31, 2011
`
`Assignor
`
`Legal Entity Type: CORPORATION
`
`State or Country
`Where Organized:
`
`DELAWARE
`
`Assignee
`
`Name: KOREA DEVELOPMENT BANK, NEW YORK BRANCH
`
`Legal Entity Type: NEW YORK STATE BANKING DEPARTMENT-
`LICENSED BRANCH OF A STATE-OWNED
`POLICY BANK
`
`State or Country
`Where Organized:
`
`KOREA, REPUBLIC OF
`
`Address: 320 PARK AVENUE, 32ND FLOOR
`NEW YORK, NEW YORK 10022
`
`Correspondent
`Name:
`
`Correspondent
`Address:
`
`ORRICK, HERRINGTON & SUTCLIFFE LLP
`
`Correspondent
`
`2050 MAIN STREET, SUITE 1100
`IP PROSECUTION DEPARTMENT
`IRVINE, CA 92614-8255
`
`Conveyance: SECURITY INTEREST
`
`Reel/Frame: 5841/0382
`
`Date Recorded: Jul. 28, 2016
`
`Supporting
`Documents:
`
`assignment-tm-5841-0382.pdf
`
`Domestic Representative - Not Found
`
`Assignment 5 of 6
`
`Pages: 11
`
`Name: ACUSHNET COMPANY
`
`Execution Date: Jul. 28, 2016
`
`Legal Entity Type: CORPORATION
`
`State or Country
`Where Organized:
`
`DELAWARE
`
`Assignor
`
`

`

`Name: WELLS FARGO BANK, NATIONAL ASSOCIATION, AS ADMINISTRATIVE AGENT
`
`Legal Entity Type: NATIONAL ASSOCIATION
`
`State or Country
`Where Organized:
`
`UNITED STATES
`
`Assignee
`
`Address: 1808 ASTON AVENUE
`SUITE 250
`CARLSBAD, CALIFORNIA 92008
`
`Correspondent
`Name:
`
`Correspondent
`Address:
`
`LATHAM & WATKINS LLP C/O ANGELA M. AMARU
`
`Correspondent
`
`885 THIRD AVENUE
`SUITE 1000
`NEW YORK, NY 10022
`
`Conveyance: RELEASE OF SECURITY INTEREST IN TRADEMARKS PREVIOUSLY RECORDED AT REEL/FRAME (4673/0710)
`
`Domestic Representative - Not Found
`
`Assignment 6 of 6
`
`Reel/Frame: 5879/0448
`
`Date Recorded: Sep. 14, 2016
`
`Supporting
`Documents:
`
`assignment-tm-5879-0448.pdf
`
`Pages: 10
`
`Name: KOREA DEVELOPMENT BANK, NEW YORK
`BRANCH, AS ADMINISTRATIVE AGENT
`
`Assignor
`
`Execution Date: Jul. 28, 2016
`
`Legal Entity Type: NEW YORK STATE BANKING DEPARTMENT-
`LICENSED BRANCH OF A STATE-OWNED
`POLICY BANK
`
`State or Country
`Where Organized:
`
`KOREA, REPUBLIC OF
`
`Name: ACUSHNET COMPANY
`
`Legal Entity Type: CORPORATION
`
`Assignee
`
`State or Country
`Where Organized:
`
`DELAWARE
`
`Address: 333 BRIDGE STREET
`FAIRHAVEN, MASSACHUSETTS 02719
`
`Correspondent
`
`Correspondent
`Name:
`
`AMBER HAREZLAK
`
`Correspondent
`Address:
`
`2475 HANOVER STREET
`PALO ALTO, CA 94304
`
`Summary
`
`Number of
`Proceedings:
`
`5
`
`Proceeding
`Number:
`
`91200449
`
`Status: Terminated
`
`Interlocutory
`Attorney:
`
`WENDY COHEN
`
`Name: Fatlace, LLC aka AKA Illest
`
`Correspondent
`Address:
`
`Correspondent e-
`mail:
`
`Associated marks
`
`MARK C ARCENAL
`800 S AMPHLETT BLVD
`SAN MATEO CA , 94402
`UNITED STATES
`
`markfatlace@gmail.com
`
`Domestic Representative - Not Found
`
`Proceedings
`
`Type of Proceeding: Opposition
`
` 
`
`Filing Date: Jun 29, 2011
`
`Status Date: Nov 08, 2016
`
`Defendant
`
`

`

`Mark
`
`ILLEST
`
`Application Status
`
`Abandoned - After Inter-Partes Decision
`
`Plaintiff(s)
`
`Serial
`Number
`
`77846283
`
`Registration
`Number
`
`Name: Acushnet Company
`
`Correspondent
`Address:
`
`NANCY H LUTZ
`MERCHANT & GOULD PC
`PO BOX 2910
`MINNEAPOLIS MN , 55402-0910
`UNITED STATES
`
`dockmpls@merchantgould.com , nlutz@merchantgould.com , cking@merchantgould.com , pcoleman@merchantgould.com
`
`Application Status
`
`Serial
`Number
`
`Registration
`Number
`
`Correspondent e-
`mail:
`
`Associated marks
`
`Mark
`
`TITLEIST
`
`TITLEIST
`
`TITLEIST
`
`TITLEIST
`
`TITLEIST
`
`TITLEIST
`
`Renewed
`
`Renewed
`
`Renewed
`
`Renewed
`
`Renewed
`
`Renewed
`
`Renewed
`
`Cancelled - Section 8
`
`Prosecution History
`
`TITLEIST #1 BALL IN GOLF.
`
`TITLEIST PERFORMANCE INSTITUTE
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`Entry Number
`
`History Text
`
`FILED AND FEE
`
`NOTICE AND TRIAL DATES SENT; ANSWER DUE:
`
`PENDING, INSTITUTED
`
`ANSWER
`
`P'S MOT TO SUSP PEND SETLMT NEGOTIATIONS
`
`SUSPENDED
`
`P'S MOT TO SUSP PEND SETLMT NEGOTIATIONS
`
`73230709
`
`71350879
`
`72376815
`
`72383144
`
`78781730
`
`73411655
`
`73756857
`
`78314310
`
`1155766
`
`316118
`
`934406
`
`933271
`
`3176825
`
`1273662
`
`1601034
`
`3111131
`
`Due Date
`
`Aug 08, 2011
`
`Date
`
`Jun 29, 2011
`
`Jun 29, 2011
`
`Jun 29, 2011
`
`Aug 08, 2011
`
`Oct 05, 2011
`
`Oct 12, 2011
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
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`16
`
`17
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`18
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`19
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`20
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`21
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`22
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`24
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`25
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`26
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`27
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`28
`
`29
`
`30
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`31
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`SUSPENDED
`
`P'S MOT TO SUSP PEND SETLMT NEGOTIATIONS
`
`SUSPENDED
`
`P'S MOT TO SUSP PEND SETLMT NEGOTIATIONS
`
`SUSPENDED
`
`P'S MOT TO SUSP PEND SETLMT NEGOTIATIONS
`
`SUSPENDED
`
`P'S MOT TO SUSP PEND SETLMT NEGOTIATIONS
`
`SUSPENDED
`
`P'S MOT TO SUSP PEND SETLMT NEGOTIATIONS
`
`SUSPENDED
`
`P'S MOT TO SUSP PEND SETLMT NEGOTIATIONS
`
`SUSPENDED
`
`P MOT TO SUSP W/ CONSENT PEND SETTL NEGOTIATIONS
`
`SUSPENDED
`
`P MOT TO SUSP W/ CONSENT PEND SETTL NEGOTIATIONS
`
`SUSPENDED
`
`P MOT TO SUSP W/ CONSENT PEND SETTL NEGOTIATIONS
`
`SUSPENDED
`
`P MOT TO SUSP W/ CONSENT PEND SETTL NEGOTIATIONS
`
`SUSPENDED
`
`P MOT TO SUSP W/ CONSENT PEND SETTL NEGOTIATIONS
`
`SUSPENDED
`
`P MOT TO SUSP W/ CONSENT PEND SETTL NEGOTIATIONS
`
`Dec 30, 2011
`
`Jan 05, 2012
`
`Feb 27, 2012
`
`Mar 01, 2012
`
`Apr 27, 2012
`
`May 01, 2012
`
`Jul 26, 2012
`
`Jul 31, 2012
`
`Oct 24, 2012
`
`Nov 07, 2012
`
`Dec 26, 2012
`
`Jan 08, 2013
`
`Feb 22, 2013
`
`Mar 05, 2013
`
`Apr 23, 2013
`
`Apr 25, 2013
`
`Jun 24, 2013
`
`Jun 26, 2013
`
`Aug 22, 2013
`
`Aug 28, 2013
`
`Oct 23, 2013
`
`Oct 30, 2013
`
`Jan 22, 2014
`
`Feb 26, 2014
`
`Apr 21, 2014
`
`

`

`32
`
`33
`
`34
`
`35
`
`36
`
`37
`
`38
`
`39
`
`40
`
`41
`
`42
`
`43
`
`44
`
`45
`
`46
`
`47
`
`48
`
`49
`
`50
`
`51
`
`SUSPENDED
`
`P MOT TO SUSP W/ CONSENT PEND SETTL NEGOTIATIONS
`
`SUSPENDED
`
`P CHANGE OF CORRESP ADDRESS
`
`P MOT TO SUSP W/ CONSENT PEND SETTL NEGOTIATIONS
`
`SUSPENDED
`
`P MOT TO SUSP W/ CONSENT PEND SETTL NEGOTIATIONS
`
`SUSPENDED
`
`P MOT TO SUSP W/ CONSENT PEND SETTL NEGOTIATIONS
`
`SUSPENDED
`
`SUSPENDED
`
`P CHANGE OF CORRESP ADDRESS
`
`P MOT TO SUSP W/ CONSENT PEND SETTL NEGOTIATIONS
`
`P MOT TO SUSP W/ CONSENT PEND SETTL NEGOTIATIONS
`
`SUSPENDED
`
`P MOT TO SUSP W/ CONSENT PEND SETTL NEGOTIATIONS
`
`SUSPENDED
`
`P MOT TO SUSP W/ CONSENT PEND SETTL NEGOTIATIONS
`
`SUSPENDED
`
`P MOT TO SUSP W/ CONSENT PEND SETTL NEGOTIATIONS
`
`SUSPENDED
`
`Jul 02, 2014
`
`Jul 21, 2014
`
`Jul 31, 2014
`
`Sep 02, 2014
`
`Oct 20, 2014
`
`Oct 24, 2014
`
`Nov 18, 2014
`
`Nov 24, 2014
`
`Jan 16, 2015
`
`Jan 26, 2015
`
`Jan 26, 2015
`
`Mar 16, 2015
`
`Mar 18, 2015
`
`Mar 18, 2015
`
`Mar 26, 2015
`
`May 15, 2015
`
`May 23, 2015
`
`Jul 15, 2015
`
`Jul 27, 2015
`
`Sep 14, 2015
`
`Sep 22, 2015
`
`52
`
`53
`
`54
`
`55
`
`56
`
`57
`
`58
`
`59
`
`60
`
`61
`
`62
`
`63
`
`64
`
`P MOT TO SUSP W/ CONSENT PEND SETTL NEGOTIATIONS
`
`SUSPENDED
`
`P MOT TO SUSP W/ CONSENT PEND SETTL NEGOTIATIONS
`
`SUSPENDED
`
`P MOT TO SUSP W/ CONSENT PEND SETTL NEGOTIATIONS
`
`SUSPENDED
`
`D CHANGE OF CORRESP ADDRESS
`
`P MOT TO SUSP W/ CONSENT PEND SETTL NEGOTIATIONS
`
`SUSPENDED
`
`W/DRAW OF APPLICATION
`
`BD DECISION: DISMISSED W/O PREJ
`
`TERMINATED
`
`Dec 11, 2015
`
`Dec 16, 2015
`
`Mar 11, 2016
`
`Mar 16, 2016
`
`Jun 10, 2016
`
`Jun 14, 2016
`
`Aug 09, 2016
`
`Aug 09, 2016
`
`Aug 11, 2016
`
`Nov 07, 2016
`
`Nov 08, 2016
`
`Nov 08, 2016
`
`Type of Proceeding: Cancellation
`
`Filing Date: May 28, 1993
`
`Status Date: Jul 08, 1994
`
`Defendant
`
`Application Status
`
`Cancelled - Section 18
`
`Plaintiff(s)
`
`Proceeding
`Number:
`
`92021652
`
`Status: Terminated
`
`Interlocutory
`Attorney:
`
`Name: SHIMANO INDUSTRIAL CO., LTD.
`
`Correspondent
`Address:
`
`MOONRAY KOJIMA
`25 WEST 43RD STREET
`NEW YORK NY , 10036
`UNITED STATES
`
`Associated marks
`
`Mark
`
`TITLIST
`
`Name: ACUSHNET COMPANY
`
`Correspondent
`Address:
`
`WILLIAM G. PECAU
`PENNIE & EDMONDS
`1155 AVENUE OF THE AMERICAS
`NEW YORK NY , 10036
`UNITED STATES
`
`Associated marks
`
`Serial
`Number
`
`Registration
`Number
`
`72410211
`
`1084407
`
`

`

`Mark
`
`TITLEIST
`
`Application Status
`
`Serial Number
`
`Registration
`Number
`
`Renewed
`
`71350879
`
`316118
`
`Prosecution History
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`Entry Number
`
`History Text
`
`FILED AND FEE
`
`NOTICE SENT; ANSWER DUE (DUE DATE)
`
`FILED AND FEE
`
`DEF'S RETURNED UNDELIVERABLE
`
`SUSPENDED PENDING PUBLICATION
`
`SERVICE BY PUBLICATION
`
`BOARD'S DECISION: GRANTED
`
`COMMISSIONER'S ORDER CANCELLING REGISTRATION
`
`TERMINATED
`
`Type of Proceeding: Opposition
`
`Due Date
`
`Jul 09, 1993
`
`Date
`
`Mar 09, 1993
`
`May 28, 1993
`
`May 28, 1993
`
`Jun 14, 1993
`
`Feb 09, 1994
`
`Mar 15, 1994
`
`May 20, 1994
`
`Jul 08, 1994
`
`Jul 08, 1994
`
`Proceeding
`Number:
`
`91083472
`
`Status: Terminated
`
`Interlocutory
`Attorney:
`
`MARC BERGSMAN
`
`Name: LSI INDUSTRIES INC.
`
`Correspondent
`Address:
`
`DONALD F. FREI
`WOOD, HERRON & EVANS
`2700 CAREW TOWER
`CINCINNATI OH , 45202
`UNITED STATES
`
`Associated marks
`
`Mark
`
`TITLEIST
`
`Filing Date: Sep 14, 1990
`
`Status Date: Feb 04, 1992
`
`Defendant
`
`Application Status
`
`Abandoned - After Inter-Partes Decision
`
`Serial
`Number
`
`74012091
`
`Registration
`Number
`
`Name: ACUSHNET COMPANY
`
`Correspondent
`Address:
`
`MERCER L. STOCKELL
`PENNIE & EDMONDS
`1155 AVENUE OF THE AMERICAS
`NEW YORK NY , 10036
`UNITED STATES
`
`Associated marks
`
`Mark
`
`TITLEIST
`
`Plaintiff(s)
`
`Application Status
`
`Serial Number
`
`Registration
`Number
`
`Renewed
`
`71350879
`
`316118
`
`Prosecution History
`
`Entry Number
`
`History Text
`
`FILED AND FEE
`
`NOTICE SENT; ANSWER DUE (DUE DATE)
`
`PENDING, INSTITUTED
`
`ANSWER
`
`TRIAL DATES SET
`
`P'S MOT FOR EXTEN. OF TIME W/ CONSENT
`
`P'S MOT FOR EXTEN. OF TIME W/ CONSENT
`
`P'S MOT FOR EXTEN. OF TIME W/ CONSENT
`
`P'S MOT FOR EXTEN. OF TIME W/ CONSENT
`
`P'S MOT FOR EXTEN. OF TIME W/ CONSENT
`
`SUSPENDED
`
`D'S MOT TO RESUME PROCEEDINGS
`
`TR