Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA1103292
`12/21/2020
`
`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
`
`JR Apparel World LLC
`
`Granted to Date
`of previous ex-
`tension
`
`Address
`
`Attorney informa-
`tion
`
`12/19/2020
`
`95 STIRRUP LANE
`SYOSSET, NY 11791
`UNITED STATES
`
`BRIAN M. TADDONIO
`DITTHAVONG & STEINER, P.C.
`701 PALOMAR AIRPORT ROAD, SUITE 230
`SAN DIEGO, CA 92011
`UNITED STATES
`Primary Email: docket@dcpatent.com
`Secondary Email(s): btaddonio@dcpatent.com
`7035199951
`
`Docket Number
`
`L1109US00
`
`Applicant Information
`
`Application No.
`
`88953607
`
`Publication date
`
`10/20/2020
`
`Opposition Filing
`Date
`
`Applicant
`
`12/21/2020
`
`Opposition Peri-
`od Ends
`
`12/19/2020
`
`Trendy Golf USA
`129 ARENA STREET
`EL SEGUNDO, CA 90245
`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: Men's and Ladies Clothing, namely, tops,
`bottoms, hats, and footwear
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`Dilution by blurring
`
`Trademark Act Sections 2 and 43(c)
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`
`1086489
`
`Application Date
`
`01/31/1977
`
`

`

`Registration Date
`
`02/28/1978
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`MEMBERS ONLY
`
`NONE
`
`Class 025. First use: First Use: 1975/07/01 First Use In Commerce: 1975/07/01
`[ MEN'S SUITS, ] SPORTS JACKETS, CLOTH JACKETS, LEATHER JACK-
`ETS, CLOTH COATS, LEATHER COATS, [ SLACKS, KNIT SHIRTS, SPORTS
`SHIRTS, ] DRESS SHIRTS, SWEATERS [ AND TIES ]
`
`U.S. Registration
`No.
`
`3915373
`
`Registration Date
`
`02/08/2011
`
`Application Date
`
`05/13/2010
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`MEMBERS ONLY
`
`NONE
`
`Class 025. First use: First Use: 1987/00/00 First Use In Commerce: 1987/00/00
`Clothing, namely, men's clothing, namely, sweatpants, sweatshirts, belts, coats,
`[ gloves, ] golf apparel, namely, golfshirts, [ golf shorts, ] golf trousers,[ hats,
`jeans, jogging suits, ] khakis,knit tops, [ leggings, ] jackets, [ blazers, scarves, ]
`shoes, [ shorts, sleepwear, socks, suits, ] sweaters, [ swimwear, ties, ] trousers,
`[ underwear, vests ]; ladies' clothing, namely, [ sweatpants, sweatshirts, belts, ]
`coats, [ dresses, blouses, skirts, gloves, golf apparel, namely, golf shirts, golf
`shorts, golfskirts and golf trousers, hats, jeans, jogging suits, khakis, knit tops,
`leggings, lingerie, ] jackets, [ blazers, scarves, ] shirts [, shoes, shorts, sleep-
`wear, socks, suits, sweaters, swimwear, slacks, trousers, vests ]; children's
`clothing, namely, [ sweatpants, sweatshirts, belts, coats, dresses, blouses,
`skirts, gloves, golf apparel, namely, golf shirts, golf shorts, golf trousers and golf
`skirts, hats, jeans, knit tops, leggings,] jackets, [ blazers, scarves, ] shirts[,
`shoes, shorts, sleepwear, socks, suits, sweaters, swimwear, ties, trousers,
`slacks, underwear and vests ]
`
`U.S. Application
`No.
`
`87558477
`
`Application Date
`
`08/07/2017
`
`Registration Date
`
`NONE
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`MEMBERS ONLY
`
`NONE
`
`Class 025. First use: First Use: 0 First Use In Commerce: 0
`Clothing, namely, men's clothing, namely, gloves, golf apparel, namely, golf
`shorts, hats, jeans, jogging suits, leggings, blazers, scarves, shorts, sleep-
`wear,socks, suits, swimwear, ties, underwear, and vests; ladies' clothing,
`namely, sweatpants, sweatshirts, belts, dresses, blouses, skirts, gloves, golf ap-
`parel, namely, golf shirts, golf shorts, golf skirts and golf trousers, hats, jeans,
`jogging suits, khakis, knit tops, leggings,lingerie, blazers, scarves, shoes, shorts,
`sleepwear, socks, suits, sweaters, swimwear, slacks, trousers, vests and head-
`wear; children's clothing, namely, sweatpants, sweatshirts, belts, coats, dresses,
`blouses, skirts, gloves, golf apparel, namely, golf shirts, golf shorts, golf trousers
`
`

`

`and golf skirts, hats, jeans,knit tops, leggings, blazers, scarves, shoes, shorts,
`sleepwear, socks, suits, sweaters, swimwear, ties, trousers, slacks, underwear,
`vests, and headwear
`
`U.S. Registration
`No.
`
`5433492
`
`Registration Date
`
`03/27/2018
`
`Application Date
`
`09/06/2017
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`MEMBERS ONLY
`
`NONE
`
`Class 008. First use: First Use: 2016/06/30 First Use In Commerce: 2016/06/30
`Manicure kits comprising tweezers, nailfile, nail clippers, and cuticle scissors;
`screwdriver kits comprising hand operated screwdrivers and punch, and multi-
`function hand tool kits comprising hand operated screwdriver bits, bit driver, pli-
`ers, measuring tape, and socket wrenchsockets
`Class 009. First use: First Use: 2013/11/30 First Use In Commerce: 2013/11/30
`Carrying cases specifically adapted forcarrying cellphones or tablets
`Class 018. First use: First Use: 2014/01/31 First Use In Commerce: 2014/01/31
`Wallets, briefcases, clutches, and totebags
`Class 020. First use: First Use: 2016/06/30 First Use In Commerce: 2016/06/30
`Wooden beer barrels
`Class 021. First use: First Use: 2016/06/30 First Use In Commerce: 2016/06/30
`Drinking glasses, beer carriers, namely, insulated carriers for carrying beer
`glasses, drinking flasks, beer growlers, beer flights in the nature of beer glasses,
`cocktail shakers, bottle openers, namely, wall mounted bottle openers and bottle
`opener bracelets, bartender sets, namely, strainers for household purpose, jig-
`gers, juicers, stir sticks, and bar towels, wine sets, namely, corkscrews, charms,
`and stoppers, and shoe polish kitscomprising shoe horn, polishing cloth, shoe
`brush, and shoe polish
`Class 024. First use: First Use: 2016/03/31 First Use In Commerce: 2016/03/31
`Bed sheets, towels, and pillow covers
`
`U.S. Application
`No.
`
`87597955
`
`Application Date
`
`09/06/2017
`
`Registration Date
`
`NONE
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`MEMBERS ONLY
`
`NONE
`
`Class 003. First use: First Use: 0 First Use In Commerce: 0
`Perfumes, colognes, cosmetics, aftershave lotions, shampoos, shower gels,
`soaps, body sprays, body powders, toilet waters, deodorants for personal use,
`hair gels, hair pomades, and essential oils forpersonal use
`Class 008. First use: First Use: 0 First Use In Commerce: 0
`Electric razors, non-electric razors, electric hair clippers, non-electric hairclip-
`pers, cutlery, namely, kitchen knives, forks, spoons, and side arms, not including
`firearms, namely, swords and hunting knives
`Class 018. First use: First Use: 0 First Use In Commerce: 0
`
`

`

`Wheeled luggage, non-wheeled luggage, handbags, all-purpose carrying bags,
`traveling bags, shoulder bags, all-purpose athletic bags, backpacks, duffle bags,
`messenger bags, sling bags, credit card cases, key cases, cosmetic bags sold
`empty, drawstring bags, shaving cases in the nature of shaving bags sold
`empty, umbrellas, parasols, walking sticks, dog collars, dog leashes, cat collars,
`pet harnesses, muzzles, coats for animals, bags for animals in the nature of an-
`imal carriers, animal skins, nappy bags of textile, namely, diaper bags
`Class 032. First use: First Use: 0 First Use In Commerce: 0
`Beers; non-alcoholic malt-based beverages; mineral, flavored and aerated wa-
`ters; carbonated and non-carbonated soft drinks; sports drinks; energy drinks;
`fruitand fruit-flavored drinks; fruit juices
`Class 033. First use: First Use: 0 First Use In Commerce: 0
`Alcoholic beverages, namely, distilled spirits
`
`U.S. Application
`No.
`
`87906182
`
`Application Date
`
`12/20/2018
`
`Registration Date
`
`NONE
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`MEMBERS ONLY
`
`NONE
`
`Class 005. First use: First Use: 0 First Use In Commerce: 0
`Medicinal products containing cannabinoids solely derived from hemp seed oil
`with a delta-9 tetrahydrocannabinol concentration of not more than 0.3 percent
`on a dry weight basis and containing only trace amounts of naturally occurring
`cannabidiol (CBD), namely, anti-inflammatorybody salves, topical pastes in the
`nature of topical analgesics, and topical oils in the nature of medicated skin care
`preparations
`Class 030. First use: First Use: 0 First Use In Commerce: 0
`Food products containing industrial hemp seed oil, namely, brownies, cookies,
`gummy candies, chocolates, and candy mints; none of the aforementioned con-
`tainingcannabidiol (CBD)
`
`U.S. Application
`No.
`
`88586923
`
`Application Date
`
`08/21/2019
`
`Registration Date
`
`NONE
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`U.S. Application
`No.
`
`MEMBERS ONLY
`
`NONE
`
`Class 009. First use: First Use: 0 First Use In Commerce: 0
`Eyeglasses, eyeglass frames, fashion eyeglasses, sunglasses, and eyewear ac-
`cessories, namely, cases, cords, and straps
`
`88859309
`
`Application Date
`
`04/03/2020
`
`Registration Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`MEMBERS ONLY
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 010. First use: First Use: 0 First Use In Commerce: 0
`medical wearing apparel, namely, surgical scrub suits, surgical scrub jackets,
`surgical scrub tops, surgical scrub pants, and surgical scrub hats
`
`Attachments
`
`Notice of Opposition.pdf(4430358 bytes )
`
`Signature
`
`/Brian M. Taddonio/
`
`Name
`
`Date
`
`BRIAN M. TADDONIO
`
`12/21/2020
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`Attorney Docket No. L1109US00
`
`
`
`
`
`
`
`
`
`JR APPAREL WORLD LLC,
`
`
`
`
`
`Opposer,
`
`
`
`
`
`
`
`
`v.
`
`
`
`
`
`TGUSA, INC., D/B/A
`
`TRENDY GOLF USA,
`
`
`
`
`
`
`
`
`Applicant.
`
`
`
`
`
`
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`Opposition No. __________
`
`
`
`Serial No. 88/953607
`
`Mark: NO MEMBERS
`
`
`
`
`NOTICE OF OPPOSITION
`
`
`Commissioner for Trademarks
`P.O. Box 1451
`Alexandria, Virginia 22313-1451
`
`
`
`
`
`JR Apparel World LLC, a New York limited liability company, located and doing
`
`business at 95 Stirrup Lane, Syosset, New York 11791, believes that it will be damaged by the
`
`registration of U.S. Trademark Application Serial No. 88/953607 (“Application”) for the mark
`
`NO MEMBERS (“Applicant’s Mark”) filed by TGUSA, Inc. d/b/a as Trendy Gold USA
`
`(“Applicant”) and therefore opposes the same.
`
`As grounds for opposition, it is alleged:
`
`1.
`
`By the Application filed on June 8, 2020, Applicant seeks to obtain registration on
`
`the Principal Register for the trademark NO MEMBERS for “Men's and Ladies [sic] Clothing,
`
`namely, tops, bottoms, hats, and footwear” in International Class 25 based on an alleged intent-
`
`to-use of the mark in interstate commerce.
`
`

`

`2.
`
`Since at least 2013, long before the filing date of the Application, Opposer has
`
`been, and still is, engaged in the development, marketing, and/or sale of men’s, women’s, and
`
`children’s jackets, clothing, apparel, footwear, sleep/loungewear, eyewear, home furnishings,
`
`and accessories all under the mark MEMBERS ONLY and has been, and still is, engaged in
`
`expanding the MEMBERS ONLY brand from its core line of products into a full “lifestyle”
`
`brand.
`
`3.
`
`In 1975, Opposer’s predecessor, International Trends, LTD. (“International
`
`Trends”), founded the world-famous brand MEMBERS ONLY and introduced the brand to the
`
`American markets.
`
`4.
`
`On January 31, 1977, International Trends filed U.S. Application Serial No.
`
`73/114094 for the mark MEMBERS ONLY for “men’s suits, sport jackets, cloth jackets, leather
`
`jackets, cloth coats, leather coats, slacks, knit shirts, sports shirts, dress shirts, sweaters, and ties”
`
`in International Class 25 based on a date of first use of July 1, 1975. On February 28, 1978, the
`
`United States Patent and Trademark Office (“PTO”) granted U.S. Application Serial No.
`
`73/114094 a Certificate of Registration and U.S. Trademark Registration No. 1086489 (the “‘489
`
`Registration”). The filing date of the ‘489 Registration, which the Opposer owns and relies on
`
`herein, is prior to the filing date of the Application. True and correct copies of the specifics of
`
`the ‘489 Registration obtained from the PTO’s Trademark Electronic Search System (TESS) and
`
`Assignment databases are attached hereto as Exhibit A and made of record.
`
`5.
`
`Through International Trends’ and its successors’ substantial advertising,
`
`marketing, and sales of goods bearing the mark MEMBERS ONLY, for example, the
`
`MEMBERS ONLY Iconic Racer Jacket shown below, the MEMBERS ONLY mark obtained
`
`tremendous popularity and became widely recognized as an iconic trademark.
`
`
`
`-2-
`
`

`

`
`
`6.
`
`Upon information and belief, at the brand’s peak, it generated approximately
`
`$150-200 million in annual revenue.
`
`7.
`
`In 2007, Members Only Licensing Group LLC (“Members Only Licensing”)
`
`acquired the entire interest in the mark MEMBERS ONLY and the associated goodwill,
`
`including the ‘489 Registration.
`
`8.
`
`On May 13, 2010, Members Only Licensing filed U.S. Application No.
`
`76/702944 for the mark MEMBERS ONLY for “Clothing, namely, men's clothing, namely,
`
`sweatpants, sweatshirts, belts, coats, gloves, golf apparel, namely, golf shirts, golf shorts, golf
`
`trousers, hats, jeans, jogging suits, khakis, knit tops, leggings, jackets, blazers, scarves, shoes,
`
`shorts, sleepwear, socks, suits, sweaters, swimwear, ties, trousers, underwear, vests; ladies'
`
`clothing, namely, sweatpants, sweatshirts, belts, coats, dresses, blouses, skirts, gloves, golf
`
`
`
`-3-
`
`

`

`apparel, namely, golf shirts, golf shorts, golf skirts and golf trousers, hats, jeans, jogging suits,
`
`khakis, knit tops, leggings, lingerie, jackets, blazers, scarves, shirts, shoes, shorts, sleepwear,
`
`socks, suits, sweaters, swimwear, slacks, trousers, vests; children's clothing, namely, sweatpants,
`
`sweatshirts, belts, coats, dresses, blouses, skirts, gloves, golf apparel, namely, golf shirts, golf
`
`shorts, golf trousers and golf skirts, hats, jeans, knit tops, leggings, jackets, blazers, scarves,
`
`shirts, shoes, shorts, sleepwear, socks, suits, sweaters, swimwear, ties, trousers, slacks,
`
`underwear and vests” in International Class 25 based on a date of first use of 1987. On February
`
`8, 2011, the PTO granted U.S. Application No. 76/702944 a Certificate of Registration and U.S.
`
`Trademark Registration No. 3915373 (the “‘373” Registration”). The filing date of the ‘373
`
`Registration, which Opposer owns and relies on herein, is prior to the filing date of the
`
`Application. True and correct copies of the specifics of the ‘373 Registration obtained from the
`
`PTO’s TESS and Assignment database are attached hereto as Exhibit B and made of record.
`
`9.
`
`On April 17, 2012, Opposer acquired through assignment Members Only
`
`Licensing’s entire interest in the ‘489 and ‘373 Registrations together with the goodwill of the
`
`business symbolized by the mark MEMBERS ONLY.
`
`10.
`
`Since at least 2013, long before the filing date of the Application, Opposer has
`
`been offering for sale and selling MEMBERS ONLY merchandise continuously and
`
`substantially exclusively throughout the United States and the world.
`
`11. MEMBERS ONLY merchandise is promoted, offered for sale, advertised, and/or
`
`sold through a wide range of trade channels including department stores, online retailers (e.g.,
`
`Amazon.com, Walmart.com, Macy’s.com, etc.), and specialty stores. For example, MEMBERS
`
`ONLY golf shirts bearing the mark MEMBERS ONLY, as shown below, are offered for sale
`
`and/or sold on Macys.com. A true and correct copy of a website screen print dated December
`
`
`
`-4-
`
`

`

`19, 2020 of Opposer’s MEMBERS ONLY golf shirts sold on Macys.com is attached hereto as
`
`Exhibit C and made of record.
`
`
`
`
`
`12.
`
`On August 7, 2017, Opposer filed U.S. Trademark Application Serial No.
`
`87/558477 for the mark MEMBERS ONLY for “Clothing, namely, men's clothing, namely,
`
`gloves, golf apparel, namely, golf shorts, hats, jeans, jogging suits, leggings, blazers, scarves,
`
`shorts, sleepwear, socks, suits, swimwear, ties, underwear, and vests; ladies' clothing, namely,
`
`sweatpants, sweatshirts, belts, dresses, blouses, skirts, gloves, golf apparel, namely, golf shirts,
`
`golf shorts, golf skirts and golf trousers, hats, jeans, jogging suits, khakis, knit tops, leggings,
`
`lingerie, blazers, scarves, shoes, shorts, sleepwear, socks, suits, sweaters, swimwear, slacks,
`
`trousers, vests and headwear; children's clothing, namely, sweatpants, sweatshirts, belts, coats,
`
`dresses, blouses, skirts, gloves, golf apparel, namely, golf shirts, golf shorts, golf trousers and
`
`golf skirts, hats, jeans, knit tops, leggings, blazers, scarves, shoes, shorts, sleepwear, socks, suits,
`
`sweaters, swimwear, ties, trousers, slacks, underwear, vests, and headwear” in International
`
`Class 25 on an intent-to-use basis (the “‘477” Application). The filing date of the ‘477
`
`
`
`-5-
`
`

`

`Application is prior to the filing date of the Application. A true and correct copy of the specifics
`
`of the ‘477 Application obtained from the PTO’s TESS database is attached hereto as Exhibit D
`
`and made of record.
`
`13.
`
`On September 6, 2017, Opposer filed U.S. Trademark Application Serial No.
`
`87/597707 for the mark MEMBERS ONLY for “Manicure kits comprising tweezers, nail file,
`
`nail clippers, and cuticle scissors; screwdriver kits comprising hand operated screwdrivers and
`
`punch, and multi-function hand tool kits comprising hand operated screwdriver bits, bit driver,
`
`pliers, measuring tape, and socket wrench sockets” in International Class 8 based on a date of
`
`first use of June 30, 2016; “Carrying cases specifically adapted for carrying cellphones or
`
`tablets” in International Class 9 based on a date of first use of November 30, 2013; “Wallets,
`
`briefcases, clutches, and tote bags” in International Class 18 based on a date of first use of
`
`January 31, 2014; “Wooden beer barrels” in International Class 20 based on a date of first use of
`
`June 30, 2016; “Drinking glasses, beer carriers, namely, insulated carriers for carrying beer
`
`glasses, drinking flasks, beer growlers, beer flights in the nature of beer glasses, cocktail shakers,
`
`bottle openers, namely, wall mounted bottle openers and bottle opener bracelets, bartender sets,
`
`namely, strainers for household purpose, jiggers, juicers, stir sticks, and bar towels, wine sets,
`
`namely, corkscrews, charms, and stoppers, and shoe polish kits comprising shoe horn, polishing
`
`cloth, shoe brush, and shoe polish” in International Class 21 based on a date of first use of June
`
`30, 2016; and “Bed sheets, towels, and pillow covers” in International Class 24 based on a date
`
`of first use of March 31, 2016. On March 27, 2018, the PTO granted Application Serial No.
`
`87/597707 a Certificate of Registration and U.S. Trademark Registration No. 5433492 (the “‘492
`
`Registration”). The filing date of the ‘492 Registration is prior to the filing date of the
`
`
`
`-6-
`
`

`

`Application. A true and correct copy of the specifics of the ‘492 Registration obtained from the
`
`PTO’s TESS is attached hereto as Exhibit E and made of record.
`
`14.
`
`On September 6, 2017, Opposer filed U.S. Application Serial No. 87/597955 for
`
`the mark MEMBERS ONLY for “Perfumes, colognes, cosmetics, aftershave lotions, shampoos,
`
`shower gels, soaps, body sprays, body powders, toilet waters, deodorants for personal use, hair
`
`gels, hair pomades, and essential oils for personal use” in International Class 3; “Electric razors,
`
`non-electric razors, electric hair clippers, non-electric hair clippers, cutlery, namely, kitchen
`
`knives, forks, spoons, and side arms, not including firearms, namely, swords and hunting knives”
`
`in International Class 8; “Wheeled luggage, non-wheeled luggage, handbags, all-purpose
`
`carrying bags, traveling bags, shoulder bags, all-purpose athletic bags, backpacks, duffle bags,
`
`messenger bags, sling bags, credit card cases, key cases, cosmetic bags sold empty, drawstring
`
`bags, shaving cases in the nature of shaving bags sold empty, umbrellas, parasols, walking sticks,
`
`dog collars, dog leashes, cat collars, pet harnesses, muzzles, coats for animals, bags for animals
`
`in the nature of animal carriers, animal skins, nappy bags of textile, namely, diaper bags” in
`
`International Class 18; “Beers; non-alcoholic malt-based beverages; mineral, flavored and
`
`aerated waters; carbonated and non-carbonated soft drinks; sports drinks; energy drinks; fruit and
`
`fruit-flavored drinks; fruit juices” in International Class 32; and “Alcoholic beverages, namely,
`
`distilled spirits” in International Class 35, all on an intent-to-use basis (the “‘955 Application”).
`
`The filing date of the ‘955 Application is prior to the filing date of the Application. A true and
`
`correct copy of the specifics of the ‘955 Application obtained from the PTO’s TESS is attached
`
`hereto as Exhibit F and made of record.
`
`15.
`
`On December 18, 2018, Opposer filed U.S. Application Serial No. 87/906182 for
`
`the mark MEMBERS ONLY for “Medicinal products containing cannabinoids solely derived
`
`
`
`-7-
`
`

`

`from hemp seed oil with a delta-9 tetrahydrocannabinol concentration of not more than 0.3
`
`percent on a dry weight basis and containing only trace amounts of naturally occurring
`
`cannabidiol (CBD), namely, anti-inflammatory body salves, topical pastes in the nature of
`
`topical analgesics, and topical oils in the nature of medicated skin care preparations” in
`
`International Class 5 and “Food products containing industrial hemp seed oil, namely, brownies,
`
`cookies, gummy candies, chocolates, and candy mints; none of the aforementioned containing
`
`cannabidiol (CBD)” in International Class 30, both on an intent-to-use basis (the “‘182
`
`Application”). The filing date of the ‘182 Application is prior to the filing date of the
`
`Application. A true and correct copy of the specifics of the ‘182 Application obtained from the
`
`PTO’s TESS is attached hereto as Exhibit G and made of record.
`
`16.
`
`On August 21, 2019, Opposer filed U.S. Application Serial No. 88/586923 for the
`
`mark MEMBERS ONLY for “Eyeglasses, eyeglass frames, fashion eyeglasses, sunglasses, and
`
`eyewear accessories, namely, cases, cords, and straps” in International Class 9 on an intent-use-
`
`basis (the “‘923 Application”). The filing date of the ‘923 Application is prior to the filing date
`
`of the Application. A true and correct copy of the specifics of the ‘923 Application obtained
`
`from the PTO’s TESS is attached hereto as Exhibit H.
`
`17.
`
`On April 3, 2020, Opposer filed U.S. Application Serial No. 88/859309 for the
`
`mark MEMBERS ONLY for “medical wearing apparel, namely, surgical scrub suits, surgical
`
`scrub jackets, surgical scrub tops, surgical scrub pants, and surgical scrub hats” in International
`
`Class 10 on an intent-to-use basis (the “‘309 Application”). The filing date of the ‘309
`
`Application is prior to the filing date of the Application. A true and correct copy of the specifics
`
`of the ‘309 Application obtained from the PTO’s TESS is attached hereto as Exhibit I.
`
`
`
`
`
`-8-
`
`

`

`Goods
`
`Filing Date
`
`First Use Date Registration
`Date
`February 28,
`1978
`
`July 1, 1975
`
`January 31,
`1977
`
`May 13, 2010 1987
`
`February 8,
`2011
`
`Mark
`
`MEMBERS
`ONLY
`
`Reg./App.
`Serial No.
`1086489
`
`MEMBERS
`ONLY
`
`3915373
`
`IC 25: [ MEN'S
`SUITS,] SPORTS
`JACKETS,
`CLOTH
`JACKETS,
`LEATHER
`JACKETS,
`CLOTH COATS,
`LEATHER
`COATS, [
`SLACKS, KNIT
`SHIRTS, SPORTS
`SHIRTS,] DRESS
`SHIRTS,
`SWEATERS [
`AND TIES ].
`IC 25: Clothing,
`namely, men's
`clothing, namely,
`sweatpants,
`sweatshirts, belts,
`coats, [ gloves, ]
`golf apparel,
`namely, golf shirts,
`[ golf shorts, ] golf
`trousers, [ hats,
`jeans, jogging
`suits, ] khakis, knit
`tops, [ leggings, ]
`jackets, [ blazers,
`scarves, ] shoes, [
`shorts, sleepwear,
`socks, suits, ]
`sweaters, [
`swimwear, ties, ]
`trousers, [
`underwear, vests ];
`ladies' clothing,
`namely, [
`sweatpants,
`sweatshirts, belts, ]
`coats, [ dresses,
`blouses, skirts,
`gloves, golf
`
`
`
`-9-
`
`

`

`Mark
`
`Reg./App.
`Serial No.
`
`Goods
`
`Filing Date
`
`First Use Date Registration
`Date
`
`apparel, namely,
`golf shirts, golf
`shorts, golf skirts
`and golf trousers,
`hats, jeans, jogging
`suits, khakis, knit
`tops, leggings,
`lingerie, ] jackets,
`[ blazers, scarves, ]
`shirts [, shoes,
`shorts, sleepwear,
`socks, suits,
`sweaters,
`swimwear, slacks,
`trousers, vests ];
`children's clothing,
`namely, [
`sweatpants,
`sweatshirts, belts,
`coats, dresses,
`blouses, skirts,
`gloves, golf
`apparel, namely,
`golf shirts, golf
`shorts, golf
`trousers and golf
`skirts, hats, jeans,
`knit tops, leggings,
`] jackets, [ blazers,
`scarves, ] shirts [,
`shoes, shorts,
`sleepwear, socks,
`suits, sweaters,
`swimwear, ties,
`trousers, slacks,
`underwear and
`vests ]
`87/558477 Clothing, namely,
`men's clothing,
`namely, gloves,
`golf apparel,
`namely, golf
`shorts, hats, jeans,
`jogging suits,
`
`MEMBERS
`ONLY
`
`August 7,
`2017
`
`
`
`
`
`
`
`-10-
`
`

`

`Mark
`
`Reg./App.
`Serial No.
`
`Goods
`
`Filing Date
`
`First Use Date Registration
`Date
`
`leggings, blazers,
`scarves, shorts,
`sleepwear, socks,
`suits, swimwear,
`ties, underwear,
`and vests; ladies'
`clothing, namely,
`sweatpants,
`sweatshirts, belts,
`dresses, blouses,
`skirts, gloves, golf
`apparel, namely,
`golf shirts, golf
`shorts, golf skirts
`and golf trousers,
`hats, jeans, jogging
`suits, khakis, knit
`tops, leggings,
`lingerie, blazers,
`scarves, shoes,
`shorts, sleepwear,
`socks, suits,
`sweaters,
`swimwear, slacks,
`trousers, vests and
`headwear;
`children's clothing,
`namely,
`sweatpants,
`sweatshirts, belts,
`coats, dresses,
`blouses, skirts,
`gloves, golf
`apparel, namely,
`golf shirts, golf
`shorts, golf
`trousers and golf
`skirts, hats, jeans,
`knit tops, leggings,
`blazers, scarves,
`shoes, shorts,
`sleepwear, socks,
`suits, sweaters,
`swimwear, ties,
`
`
`
`-11-
`
`

`

`Mark
`
`Reg./App.
`Serial No.
`
`Goods
`
`Filing Date
`
`First Use Date Registration
`Date
`
`September 6,
`2017
`
`March 27,
`2018
`
`June 30, 2016
`(IC 8)
`
`November 30,
`2013 (IC 9)
`
`January 31,
`2014 (IC 18)
`
`June 30, 2016
`(IC 20)
`
`June 30, 2016
`(IC 21)
`
`March 31,
`2016
`(IC 24)
`
`MEMBERS
`ONLY
`
`5433492
`
`trousers, slacks,
`underwear, vests,
`and headwear
`IC 8: Manicure
`kits comprising
`tweezers, nail file,
`nail clippers, and
`cuticle scissors;
`screwdriver kits
`comprising hand
`operated
`screwdrivers and
`punch, and multi-
`function hand tool
`kits comprising
`hand operated
`screwdriver bits,
`bit driver, pliers,
`measuring tape,
`and socket wrench
`sockets
`
`IC 9: Carrying
`cases specifically
`adapted for
`carrying
`cellphones or
`tablets
`
`IC 18: Wallets,
`briefcases,
`clutches, and tote
`bags
`
`IC 20: Wooden
`beer barrels
`
`IC 21: Drinking
`glasses, beer
`carriers, namely,
`insulated carriers
`for carrying beer
`glasses, drinking
`flasks, beer
`
`
`
`-12-
`
`

`

`Mark
`
`Reg./App.
`Serial No.
`
`Goods
`
`Filing Date
`
`First Use Date Registration
`Date
`
`growlers, beer
`flights in the
`nature of beer
`glasses, cocktail
`shakers, bottle
`openers, namely,
`wall mounted
`bottle openers and
`bottle opener
`bracelets,
`bartender sets,
`namely, strainers
`for household
`purpose, jiggers,
`juicers, stir sticks,
`and bar towels,
`wine sets, namely,
`corkscrews,
`charms, and
`stoppers, and shoe
`polish kits
`comprising shoe
`horn, polishing
`cloth, shoe brush,
`and shoe polish
`
`IC 24: Bed sheets,
`towels, and pillow
`covers
`IC 3: Perfumes,
`colognes,
`cosmetics,
`aftershave lotions,
`shampoos, shower
`gels, soaps, body
`sprays, body
`powders, toilet
`waters, deodorants
`for personal use,
`hair gels, hair
`pomades, and
`essential oils for
`personal use
`
`
`MEMBERS
`ONLY
`
`87/597955
`
`September 6,
`2017
`
`
`
`
`
`
`
`-13-
`
`

`

`Mark
`
`Reg./App.
`Serial No.
`
`Goods
`
`Filing Date
`
`First Use Date Registration
`Date
`
`IC 8: Electric
`razors, non-electric
`razors, electric hair
`clippers, non-
`electric hair
`clippers, cutlery,
`namely, kitchen
`knives, forks,
`spoons, and side
`arms, not
`including firearms,
`namely, swords
`and hunting knives
`
`IC 18: Wheeled
`luggage, non-
`wheeled luggage,
`handbags, all-
`purpose carrying
`bags, traveling
`bags, shoulder
`bags, all-purpose
`athletic bags,
`backpacks, duffle
`bags, messenger
`bags, sling bags,
`credit card cases,
`key cases,
`cosmetic bags sold
`empty, drawstring
`bags, shaving
`cases in the nature
`of shaving bags
`sold empty,
`umbrellas,
`parasols, walking
`sticks, dog collars,
`dog leashes, cat
`collars, pet
`harnesses,
`muzzles, coats for
`animals, bags for
`animals in the
`nature of animal
`
`
`
`-14-
`
`

`

`Mark
`
`Reg./App.
`Serial No.
`
`Goods
`
`Filing Date
`
`First Use Date Registration
`Date
`
`MEMBERS
`ONLY
`
`87/906182
`
`carriers, animal
`skins, nappy bags
`of textile, namely,
`diaper bags
`
`IC 32: Beers; non-
`alcoholic malt-
`based beverages;
`mineral, flavored
`and aerated waters;
`carbonated and
`non-carbonated
`soft drinks; sports
`drinks; energy
`drinks; fruit and
`fruit-flavored
`drinks; fruit juices
`
`IC 33: Alcoholic
`beverages, namely,
`distilled spirits
`IC 5: Medicinal
`products
`containing
`cannabinoids
`solely derived
`from hemp seed
`oil with a delta-9
`tetrahydrocannabin
`ol concentration of
`not more than 0.3
`percent on a dry
`weight basis and
`containing only
`trace amounts of
`naturally occurring
`cannabidiol
`(CBD), namely,
`anti-inflammatory
`body salves,
`topical pastes in
`the nature of
`topical analgesics,
`and topical oils in
`
`December 20,
`2018
`
`
`
`
`
`
`
`-15-
`
`

`

`Mark
`
`Reg./App.
`Serial No.
`
`Goods
`
`Filing Date
`
`First Use Date Registration
`Date
`
`the nature of
`medicated skin
`care preparations
`
`IC 30: Food
`products
`containing
`industrial hemp
`seed oil, namely,
`brownies, cookies,
`gummy candies,
`chocolates, and
`candy mints; none
`of the
`aforementioned
`containing
`cannabidiol (CBD)
`IC 9: Eyeglasses,
`eyeglass frames,
`fashion eyeglasses,
`sunglasses, and
`eyewear
`accessories,
`namely, cases,
`cords, and straps
`IC 10: medical
`wearing apparel,
`namely, surgical
`scrub suits,
`surgical scrub
`jackets, surgical
`scrub tops,
`surgical scrub
`pants, and surgical
`scrub hats
`
`MEMBERS
`ONLY
`
`88/586923
`
`MEMBERS
`ONLY
`
`88/859309
`
`August 21,
`2019
`
`
`
`April 3, 2020
`
`
`
`
`
`
`
`
`The foregoing registrations are valid, subsisting, unrevoked, and uncancelled; as
`
`18.
`
`such they constitute prima facie evidence of the validity of the registered marks and of the
`
`registrations thereof, and of Opposer’s ownership of the marks shown therein. Opposer’s
`
`registrations also constitute notice to Applicant of Opposer’s claim of ownership of the marks
`
`
`
`-16-
`
`

`

`shown therein as provided in Sections 7(b), 22, and 33(a) of the Trademark Act, 15 U.S.C. §§
`
`1057, 1072, and 1115, respectively.
`
`19.
`
`Opposer’s Registration Nos. 1086489 and 3915373 are incontestable. As such,
`
`they constitute conclusive evidence of the validity of the registered marks and of the registrations
`
`of the marks, of Opposer’s ownership of its marks, and of Opposer’s exclusive right to use the
`
`registered marks in commerce as provided in Section 33 of the Trademark Act, 15 U.S.C. §
`
`1115.
`
`20.
`
`Opposer also owns substantial common law trademark rights associated with the
`
`mark MEMBERS ONLY.
`
`21.
`
`Opposer’s family of MEMBERS ONLY marks, including but not limited to the
`
`above-referenced marks, are collectively referred to herein as the “MEMBERS ONLY Mark.”
`
`22.
`
`Since introducing the MEMBERS ONLY Iconic Racer Jacket to consumers over
`
`30 years ago, Opposer and its predecessors have spent millions of dollars advertising and
`
`promoting the MEMBERS ONLY Iconic Racer Jacket to consumers and millions of units have
`
`been sold over that time resulting in millions of dollars of sales revenues.
`
`23.
`
`The MEMBERS ONLY Iconic Racer Jacket, prominently featuring the
`
`MEMBERS ONLY Mark on the front of the jacket, has appeared in numerous contemporary and
`
`popular television shows such as Saturday Night Live, Big Bang Theory, and The Walking Dead;
`
`various commercials including during the National Football League Super Bowl; and several
`
`movies such as The Pursuit of Happiness, The Love Guru, The Other Guys, Anchorman 2. In
`
`addition, the MEMBERS ONLY Iconic Racer Jacket and the MEMBERS ONLY brand have
`
`been popularized by a wide variety of past and present entertainers and celebrities including
`
`Frank Sinatra, Freddie M