Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA1110060
`01/25/2021
`
`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
`
`Granted to Date
`of previous ex-
`tension
`
`Address
`
`Attorney informa-
`tion
`
`No Bozos LLC
`
`01/24/2021
`
`70 WASHINGTON STREET, APT. 6M
`BROOKLYN, NY 11201
`UNITED STATES
`
`MONICA P. MCCABE
`PHILLIPS NIZER LLP
`485 LEXINGTON AVENUE
`14TH FLOOR
`NEW YORK, NY 10017
`UNITED STATES
`Primary Email: MonicaM@phillipsnizer.com
`Secondary Email(s): hmintz@phillipsnizer.com, CArrington@phillipsnizer.com
`212-841-0713
`
`Docket Number
`
`89922.00002
`
`Applicant Information
`
`Application No.
`
`88915106
`
`Publication date
`
`07/28/2020
`
`Opposition Filing
`Date
`
`Applicant
`
`01/25/2021
`
`Opposition Peri-
`od Ends
`
`01/24/2021
`
`Malibu Shirts, Inc.
`29399 AGOURA ROAD, SUITE 109
`AGOURA HILLS, CA 91301
`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: Baseball caps and hats; Beanies; Board
`shorts; Caps being headwear; Footwear; Hats; Hooded sweatshirts; Jackets; Pants;Shirts; Shorts;
`Socks; Sweaters; Sweatshirts; T-shirts; Tank tops; Underwear; Graphic T-shirts; Short-sleeved or
`long-sleeved t-shirts
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`Marks Cited by Opposer as Basis for Opposition
`
`

`

`U.S. Application
`No.
`
`90119554
`
`Application Date
`
`08/17/2020
`
`Registration Date
`
`NONE
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`U.S. Application
`No.
`
`CW
`
`The mark consists of stylized letters "CW" with a short arrow attached at the end
`of the "W".
`
`Class 012. First use: First Use: 0 First Use In Commerce: 0
`Scooters and electric bicycles
`
`90070590
`
`Application Date
`
`07/23/2020
`
`Registration Date
`
`NONE
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`U.S. Application
`No.
`
`CW RACING
`
`NONE
`
`Class 025. First use: First Use: 2011/12/31 First Use In Commerce: 2019/07/25
`Clothing, namely, T-shirts, hoodies, and jerseys
`
`90070586
`
`Application Date
`
`07/23/2020
`
`Registration Date
`
`NONE
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`U.S. Application
`No.
`
`CW RACING
`
`The mark consists of stylized letters "CW" with an a short arrow attached at the
`end of the "W" next to the word 'RACING" in block letters.
`
`Class 025. First use: First Use: 2011/12/31 First Use In Commerce: 2019/07/25
`Clothing, namely, T-shirts, hoodies, and jerseys
`
`90070584
`
`Application Date
`
`07/23/2020
`
`Registration Date
`
`NONE
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`U.S. Application
`No.
`
`CW
`
`The mark consists of stylized letters "CW" with an a short arrow attached at the
`end of the "W".
`
`Class 025. First use: First Use: 2011/12/31 First Use In Commerce: 2019/07/25
`Clothing, namely, T-shirts, hoodies, and jerseys
`
`90119148
`
`Application Date
`
`08/17/2020
`
`Registration Date
`
`NONE
`
`Word Mark
`
`CW RACING
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`U.S. Application
`No.
`
`The mark consists of stylized letters "CW" with a short arrow attached at the end
`of the "W" next to the word "RACING" in block letters.
`
`Class 012. First use: First Use: 0 First Use In Commerce: 0
`Scooters and electric bicycles
`
`90048566
`
`Application Date
`
`07/12/2020
`
`Registration Date
`
`NONE
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`CW RACING
`
`The mark consists of stylized letters "CW" next to the word "RACING" in block
`letters.
`
`Class 012. First use: First Use: 2018/07/13 First Use In Commerce: 2018/07/13
`Bicycle parts and accessories, namely, handlebars, forks, grips, grip donuts,
`seat and pad sets, race kits
`Class 040. First use: First Use: 2018/07/13 First Use In Commerce: 2018/07/13
`Manufacture and distribution of bicycleparts and accessories, and apparel
`
`U.S. Application
`No.
`
`90048561
`
`Application Date
`
`07/12/2020
`
`Registration Date
`
`NONE
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`CW
`
`NONE
`
`Class 012. First use: First Use: 2018/07/13 First Use In Commerce: 2018/07/13
`Bicycle parts and accessories, namely, handlebars, forks, grips, grip donuts,
`seat and pad sets, race kits
`Class 040. First use: First Use: 2018/07/13 First Use In Commerce: 2018/07/13
`Manufacture and distribution of bicycleparts and accessories, and apparel
`
`U.S. Application
`No.
`
`90048560
`
`Application Date
`
`07/12/2020
`
`Registration Date
`
`NONE
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`CW RACING
`
`NONE
`
`Class 012. First use: First Use: 2018/07/13 First Use In Commerce: 2018/07/13
`Bicycle parts and accessories, namely, handlebars, forks, grips, grip donuts,
`seat and pad sets, race kits
`Class 040. First use: First Use: 2018/07/13 First Use In Commerce: 2018/07/13
`Manufacture and distribution of bicycleparts and accessories, and apparel
`
`U.S. Application
`No.
`
`90048567
`
`Application Date
`
`07/12/2020
`
`

`

`Registration Date
`
`NONE
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`CW
`
`The mark consists of stylized letters "CW".
`
`Class 012. First use: First Use: 2018/07/13 First Use In Commerce: 2018/07/13
`Bicycle parts and accessories, namely, handlebars, forks, grips, grip donuts,
`seat and pad sets, race kits
`Class 040. First use: First Use: 2018/07/13 First Use In Commerce: 2018/07/13
`Manufacture and distribution of bicycleparts and accessories, and apparel
`
`Attachments
`
`No Bozos - Notice of Opp Final Version 6.pdf(64683 bytes )
`
`Signature
`
`/Monica P. McCabe/
`
`Name
`
`Date
`
`MONICA P. MCCABE
`
`01/25/2021
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`NO BOZOS LLC,
`
`Opposer,
`
`v.
`
`MALIBU SHIRTS, INC.,
`
`Applicant.
`
`Opposition No.: ____________
`
`Serial. No.: 88/915,106
`
`:
`:
`:
`:
`:
`:
`:
`
`Mark:
`
`International Class: 25
`
`NOTICE OF OPPOSITION
`
`No Bozos LLC (“Opposer”), a New York limited liability company located at 70
`
`Washington Street, Apt. 6M, New York, NY 11201, believes that it will be damaged by issuance
`
`of a registration for Application Serial No. 88/915,106 for the trademark
`
`(“Applicant’s Mark”) filed by Malibu Shirts, Inc. (“Applicant”), and therefore opposes the
`
`same. As grounds for the opposition, Opposer, by and through its attorneys Phillips Nizer LLP,
`
`alleges as follows.
`
`Opposer’s CW RACING Mark and Related Goodwill
`
`1.
`
`Opposer and its Predecessor (defined in Paragraph 2) are well-known producers
`
`of clothing and sporting equipment.
`
`2.
`
`Opposer’s first use in commerce of the CW RACING Mark dates back to 2011 by
`
`its predecessors in interest, Custom Works BMX, LLC (“Custom Works BMX”), which was
`
`1
`
`

`

`formed in 2009, Juan Mattos (“Mattos”) and Jeffry Haney (“Haney”) who were the members of
`
`Custom Works BMX (“Predecessor”), without any objection from Applicant or any other entity.
`
`3.
`
`Opposer owns all right and title to the following “CW RACING”-related
`
`trademark applications filed with the United States Patent and Trademark Office (collectively,
`
`“Opposer’s CW RACING Mark” or “CW RACING Mark”):
`
`TRADEMARK
`
`SERIAL
`NO.
`
`FILING
`DATE
`
`GOODS/SERVICES
`
`CW
`
`90119554 8/17/2020
`
`12 - Scooters and electric bicycles
`
`CW RACING
`
`90070590 7/23/2020
`
`CW RACING
`
`90070586 7/23/2020
`
`25 - Clothing, namely, T-shirts, hoodies,
`and jerseys
`
`25 - Clothing, namely, T-shirts, hoodies,
`and jerseys
`
`CW
`
`90070584 7/23/2020
`
`25 - Clothing, namely, T-shirts, hoodies,
`and jerseys
`
`CW RACING
`
`90119148 8/17/2020
`
`12 – Scooters and electric bicycles
`
`CW RACING
`
`90048566 7/12/2020
`
`CW
`
`90048561 7/12/2020
`
`2
`
`12 - Bicycle parts and accessories,
`namely, handlebars, forks, grips, grip
`donuts, seat and pad sets, race kits
`
`40 - Manufacture and distribution of
`bicycle parts and accessories, and
`apparel
`12 - Bicycle parts and accessories,
`namely, handlebars, forks, grips, grip
`
`

`

`CW RACING
`
`90048560 7/12/2020
`
`CW
`
`90048567 7/12/2020
`
`donuts, seat and pad sets, race kits
`
`40 - Manufacture and distribution of
`bicycle parts and accessories, and
`apparel
`12 - Bicycle parts and accessories,
`namely, handlebars, forks, grips, grip
`donuts, seat and pad sets, race kits
`
`40 - Manufacture and distribution of
`bicycle parts and accessories, and
`apparel
`12 - Bicycle parts and accessories,
`namely, handlebars, forks, grips, grip
`donuts, seat and pad sets, race kits
`
`40 - Manufacture and distribution of
`bicycle parts and accessories, and
`apparel
`
`4.
`
`Opposer has used the CW RACING Mark, by and through its Predecessor since
`
`2011, with a range of goods and services relating to clothing, bicycles, bicycle parts and
`
`accessories. Accordingly, the CW RACING Mark has built up substantial recognition and
`
`goodwill.
`
`5.
`
`Since 2011, Opposer and its Predecessor have undertaken substantial effort and
`
`expense in the promotion and sale of such goods and services and have promoted the CW
`
`RACING Mark worldwide through website, www.CW-Racing.com, social media, and through
`
`its licensees such as Flite X Sports, Inc. and Old School BMX.
`
`6.
`
`Additionally, Opposer and its Predecessor have earned substantial revenues from
`
`the sale of goods and services under the CW RACING Mark. As a result of the investment in
`
`advertising, use, and sales success as well as press coverage, Opposer’s distinctive CW RACING
`
`Mark has developed significance in the minds of the public and become a strong source identifier
`
`3
`
`

`

`of Opposer’s services and goods. Consequently, the CW RACING Mark has earned extensive
`
`goodwill.
`
`7.
`
`In 2018, Custom Works BMX was dissolved, and the owners of the limited
`
`liability company, Mattos and Haney, became the lawful owners of all rights to the assets of the
`
`dissolved company, including its trademarks, trade dress, domain names, and related intellectual
`
`property rights.
`
`8.
`
`On April 16, 2020, Haney and Mattos assigned all right, title, interest and
`
`goodwill in the CW RACING Mark as well as the CW mark to Opposer.
`
`9.
`
`On April 19, 2020, Haney and Mattos assigned all right, title, and interest to the
`
`CW RACING Mark’s trade dress, domain names and related intellectual property rights to
`
`Opposer.
`
`10.
`
`Since the April 2020 assignments, Opposer has consistently engaged in promotion
`
`and sale of its goods and services under Opposer’s CW RACING Mark online through its
`
`licensees and on social media.
`
`11.
`
`On October 29, 2020, the United States Patent and Trademark Office issued
`
`suspension letters against Opposer for its pending CW RACING Marks (Application Nos.
`
`90070584, 90070586, 90070590). Applicant’s Mark was cited as the basis for the suspension
`
`letters against registration of Opposer’s CW RACING Marks.
`
`Applicant’s Mark
`
`12.
`
`Applicant is a California corporation with an address of 29399 Agoura Road,
`
`Suite 109, Agoura Hills, California 91301.
`
`4
`
`

`

`13.
`
`On May 13, 2020, Applicant filed U.S. trademark application Serial No.
`
`88/915,106 to register the design mark
`
` for use in connection with “Baseball caps and
`
`hats; Beanies; Board shorts; Caps being headwear; Footwear; Hats; Hooded sweatshirts; Jackets;
`
`Pants; Shirts; Shorts; Socks; Sweaters; Sweatshirts; T-shirts; Tank tops; Underwear; Graphic T-
`
`shirts; Short-sleeved or long-sleeved t-shirts” in International Class 25.
`
`14.
`
`Applicant’s Mark was filed on an intent to use basis under Section 1(b) of the
`
`Lanham Act, 15 U.S.C. §1051(b). As of the filing of this Opposition, Applicant has not filed a
`
`statement of use.
`
`Opposer’s Rights Predate Applicant’s Rights
`
`15.
`
`Opposer repeats and realleges paragraph 1 through 14 of this Notice of
`
`Opposition as thought fully alleged herein.
`
`16.
`
`Opposer’s CW RACING Mark has been used by Opposer since a date prior to any
`
`date on which Applicant can rely.
`
`17.
`
`Prior to any date on which Applicant can rely, Applicant knew or should have
`
`known about Opposer’s CW RACING Mark before filing the application for Applicant’s Mark.
`
`18.
`
`Opposer’s rights in Opposer’s CW RACING Mark are prior and superior to any
`
`rights Applicant may claim in Applicant’s Mark. The registration of Applicant’s Mark is
`
`inconsistent with Opposer’s prior rights.
`
`19.
`
`The use of Applicant’s Mark will infringe and/or dilute Opposer’s prior rights in
`
`Opposer’s CW RACING Mark.
`
`Likelihood of Confusion
`
`5
`
`

`

`20.
`
`Opposer repeats and realleges paragraph 1 through 19 of this Notice of
`
`Opposition as though fully alleged herein.
`
`21.
`
`There is a reasonable likelihood of confusion in the marketplace between
`
`Applicant’s Mark and Opposer’s CW RACING Mark. Applicant’s Mark is identical in sight,
`
`sound, connotation, and commercial impression as Opposer’s CW RACING Mark.
`
`22.
`
`Applicant’s description of its goods in Class 25 is virtually identical to Opposer’s
`
`goods in Class 25.
`
`23.
`
`Upon information and belief, Applicant’s goods are projected to be sold within
`
`the same channels of trade as Opposer’s customer base as both parties sell to those interested in
`
`vintage apparel online. Upon information and belief Applicant and Opposer have a similar
`
`customer base.
`
`24.
`
`Applicant’s Mark so closely resembles Opposer’s CW RACING Mark as to cause
`
`confusion, mistake or deception as to the source of Applicant’s purported goods. There is a
`
`strong likelihood that the consuming public will believe that Applicant’s goods offered under
`
`Applicant’s Mark emanate from, are associated with, are connected to, or are sponsored by
`
`Opposer.
`
`25.
`
`The use and registration of Applicant’s Mark on goods identical to Opposer’s
`
`goods like clothing is likely to cause substantial harm to Opposer.
`
`26.
`
`By reason of the foregoing, Opposer has been and is likely to be further harmed
`
`by the registration of Application Serial No. 88/161,962 for Applicant’s Mark.
`
`6
`
`

`

`THEREFORE, Opposer respectfully requests that this Notice of Opposition be sustained
`
`and that registration of the mark shown in Application Serial No. 88/915,106 be refused in its
`
`entirety.
`
`Dated: January 24, 2021
`
`
`
`By: /s/ monica p. mccabe
`
`New York, New York
`
`PHILLIPS NIZER LLP
`Monica P. McCabe
`Candace R. Arrington
`485 Lexington Avenue, 14th Floor
`New York, NY 10017
`(212) 841-0713
`monicam@phillipsnizer.com
`
`
`
`Attorneys for Petitioner
`No Bozos LLC
`
`7
`
`

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