Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
`ESTTA1168007
`10/25/2021
`
`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
`
`Entity
`
`Address
`
`Glen Raven, Inc
`
`Corporation
`
`1831 NORTH PARK AVENUE
`GLEN RAVEN, NC 27217
`UNITED STATES
`
`Citizenship
`
`North Carolina
`
`Attorney informa-
`tion
`
`CHRISTOPHER KELLY
`WILEY REIN LLP
`1776 K STREET, N.W.
`TRADEMARK ADMINISTRATION
`WASHINGTON, DC 20006
`UNITED STATES
`Primary Email: ckelly@wiley.law
`Secondary Email(s): bdavis@wiley.law, tmdocket@wiley.law
`2027197000
`
`Docket Number
`
`79545.1414
`
`Applicant Information
`
`Application No.
`
`90502206
`
`Publication date
`
`09/28/2021
`
`Opposition Filing
`Date
`
`Applicant
`
`10/25/2021
`
`Opposition Peri-
`od Ends
`
`10/28/2021
`
`Sundella Brand LLC
`8107 WESSEX PLACE
`PRINCETON, NJ 08540
`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: Tops as clothing; Bottoms as clothing; T-
`shirts; Long-sleeved shirts; Short-sleeved shirts; Tank tops; Polo shirts; Pants; Shorts; Sweatshirts;
`Hoodies; Swimwear; Underwear; Socks; Hats; Gloves; Scarves; Headwear; Belts for clothing; Jack-
`ets; Vests; Coats
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`
`5474228
`
`Application Date
`
`09/19/2017
`
`

`

`Registration Date
`
`05/22/2018
`
`Word Mark
`
`Design Mark
`
`SUNBRELLA
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 023. First use: First Use: 1996/06/04 First Use In Commerce: 1996/06/04
`yarn
`Class 024. First use: First Use: 1961/00/00 First Use In Commerce: 1961/00/00
`Fabrics for the manufacture of awnings,sun and windscreens, shade sails, tents,
`canopies, boat covers and tops, indoorand outdoor furniture, beach, garden and
`market umbrellas, cushions, pillows, area rugs, draperies, sheers, window treat-
`ments, automotive applications, namely,headliners and convertible tops, and
`sports, athletic, tote and golf bags
`
`U.S. Registration
`No.
`
`5268851
`
`Registration Date
`
`08/22/2017
`
`Word Mark
`
`Design Mark
`
`SUNBRELLA CONTOUR
`
`Application Date
`
`04/07/2016
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 024. First use: First Use: 2015/10/07 First Use In Commerce: 2015/10/07
`fabrics in the piece for shade applications, namely, for use in the manufactureof
`awnings, umbrellas, pergolas, loggias, shade sails, windscreens, cabanas, can-
`opies, tents, draperies, sheers, windowtreatments, boat covers and tops, cockpit
`awnings, cushions, indoor and outdoorfurniture
`
`U.S. Registration
`No.
`
`3731230
`
`Registration Date
`
`12/29/2009
`
`Application Date
`
`06/02/2009
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Word Mark
`
`Design Mark
`
`SUNBRELLA
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of a stylized umbrella design and the word "SUNBRELLA", all
`in orange
`
`Class 024. First use: First Use: 2008/10/21 First Use In Commerce: 2008/10/21
`fabrics sold in the piece for use in producing awnings, sun and windscreens,
`tents, canopies, boat covers and tops, indoor and outdoor furniture, beach um-
`brellas, area rugs, draperies, sheers, windowtreatments
`
`U.S. Registration
`No.
`
`3652524
`
`Registration Date
`
`07/07/2009
`
`Word Mark
`
`SUNBRELLA
`
`Application Date
`
`08/26/2008
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of "SUNBRELLA" & Stylized Umbrella Design.
`
`Class 024. First use: First Use: 2008/10/21 First Use In Commerce: 2008/10/21
`fabrics sold in the piece for use in producing awnings, sun and windscreens,
`tents, canopies, boat covers and tops, indoor and outdoor furniture, beach um-
`brellas, area rugs, draperies, sheers, windowtreatments
`
`U.S. Registration
`No.
`
`2966133
`
`Registration Date
`
`07/12/2005
`
`Word Mark
`
`Design Mark
`
`SUNBRELLA "PLUS"
`
`Application Date
`
`06/09/2004
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 024. First use: First Use: 1991/06/00 First Use In Commerce: 1991/06/00
`fabrics sold in the piece for use in producing awnings, sun and windscreens,
`tents, canopies, boat covers and tops, indoor and outdoor furniture and beach
`umbrellas
`
`U.S. Registration
`No.
`
`709110
`
`Registration Date
`
`12/27/1960
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`SUNBRELLA
`
`NONE
`
`Application Date
`
`05/03/1960
`
`Foreign Priority
`Date
`
`NONE
`
`Goods/Services
`
`Class 024. First use: First Use: 1959/12/11 First Use In Commerce: 1959/12/11
`
`

`

`Fabrics for Awnings, Furniture, Handbags, and Sportswear
`
`Attachments
`
`87613753#TMSN.png( bytes )
`86968302#TMSN.png( bytes )
`77749650#TMSN.png( bytes )
`77556137#TMSN.png( bytes )
`76596398#TMSN.png( bytes )
`NOTICE OF OPPOSITION SUNDELLA.pdf(836507 bytes )
`
`Signature
`
`/Christopher Kelly/
`
`Name
`
`Date
`
`Christopher Kelly
`
`10/25/2021
`
`

`

`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`90/502,206
`February 1, 2021
`SUNDELLA
`September 28, 2021
`
`IN RE APP. SER. NO.:
`FILED:
`
`
`MARK:
`
`
`PUBLISHED:
`
`
`____________________________________
`GLEN RAVEN, INC. )
`
`
`
`)
`
`Opposer,
`
`)
`
`
`
`)
`
`
`v.
`)
`
`
`
`)
`SUNDELLA BRAND LLC
`)
`
`
`
`)
`
`Applicant.
`)
`____________________________________)
`
`
`
`
`NOTICE OF OPPOSITION
`
`
`
`
`
`Glen Raven, Inc., a corporation organized under the laws of the state of North Carolina,
`
`with principal offices located at 1831 North Park Avenue, Glen Raven, North Carolina 27217
`
`(“Opposer”), hereby opposes registration of application Ser. No. 90/502,206 – SUNDELLA for
`
`goods described as “tops as clothing; bottoms as clothing; t-shirts; long-sleeved shirts; short-
`
`sleeved shirts; tank tops; polo shirts; pants; shorts; sweatshirts; hoodies; swimwear; underwear;
`
`socks; hats; gloves; scarves; headwear; belts for clothing; jackets; vests; coats,” in International
`
`Class 25, filed February 1, 2021, by Sundella Brand LLC (“Applicant”), and published for
`
`opposition in the Official Gazette dated September 28, 2021.
`
`Opposer will be damaged if the challenged application matures to registration and puts
`
`forth the following grounds for opposition:
`
`1.
`
`Opposer is a leading manufacturer of fabrics in the piece for a wide array of end
`
`uses, including, without limitation, fabrics for the manufacture of awnings, sun and windscreens,
`
`shade sails, tents, canopies, boat covers and tops, indoor and outdoor furniture, beach, garden
`
`and market umbrellas, cushions, pillows, area rugs, draperies, sheers, window treatments,
`
`
`
`

`

`
`
`automotive applications, namely, headliners and convertible tops, and sports, athletic, tote and
`
`golf bags.
`
`2.
`
`Through the years, Opposer’s SUNBRELLA fabrics have been used to
`
`manufacture clothing, including jackets, and Opposer frequently distributes clothing, such as
`
`polo shirts and hats, under the SUNBRELLA name.
`
`3.
`
`Opposer adopted and commenced use of its flagship trademark SUNBRELLA at
`
`least as early as 1961 and has used the name continuously and without interruption to the present
`
`day. Opposer’s first use and registration of its SUNBRELLA mark precede the filing date of the
`
`challenged application by a significant period of time.
`
`4.
`
`Opposer’s SUNBRELLA brand fabrics are sold throughout the United States and
`
`internationally.
`
`
`
`5.
`
`Consumers closely associate Opposer’s SUNBRELLA Mark and fabrics with
`
`finished products and often base purchasing decisions on whether such products contain
`
`Opposer’s SUNBRELLA brand fabrics.
`
`
`
`6.
`
`Opposer advertises and promotes its SUNBRELLA brand fabrics in major
`
`newspapers, magazines, trade journals and via the Internet. Opposer also distributes promotional
`
`brochures, pamphlets, promotional videos and podcasts and point-of-purchase materials.
`
`7.
`
`Opposer maintains an active Internet presence in support of its SUNBRELLA
`
`brand fabrics through its principal website found at <www.sunbrella.com>. Opposer’s website is
`
`popular among consumers and trade and industry purchasers, among others, and receives
`
`thousands of visitors annually looking for information about SUNBRELLA fabrics.
`
`8.
`
`Opposer also actively promotes its SUNBRELLA fabrics through such social
`
`media platforms as Facebook, Twitter, Pinterest, and Instagram.
`
`
`
`2
`
`

`

`
`
`
`
`9.
`
`Opposer’s SUNBRELLA brand fabrics also receive significant gratuitous
`
`publicity and awards.
`
`
`
`10.
`
`Due to the renown of Opposer’s SUNBRELLA brand fabrics, manufacturers and
`
`distributors enthusiastically promote use of SUNBRELLA fabrics in their finished products.
`
`Opposer routinely supplies pass-through hang tags, labels and other materials bearing the
`
`SUNBRELLA Mark to its manufacturing customers to affix to their articles of finished
`
`merchandise.
`
`
`
`
`
`11.
`
`Opposer’s SUNBRELLA Mark is a highly distinctive coined term.
`
`12.
`
`Based on Opposer’s extensive, exclusive and continuous use of its SUNBRELLA
`
`Mark, SUNBRELLA is a strong mark, is well recognized by the consuming public as a
`
`designator of origin with respect to Opposer’s products and is entitled to a broad scope of
`
`protection.
`
`
`
`13.
`
`Opposer is the owner of all right, title and interest in the SUNBRELLA word
`
`mark and SUNBRELLA Logo (collectively “SUNBRELLA Mark”) and corresponding
`
`registrations issued by the U.S. Patent and Trademark Office, including, without limitation, the
`
`following:
`
` Reg. No. 5,474,228 – SUNBRELLA for “yarn” and “fabrics for the manufacture
`of awnings, sun and windscreens, shade sails, tents, canopies, boat covers and
`tops, indoor and outdoor furniture, beach, garden and market umbrellas, cushions,
`pillows, area rugs, draperies, sheers, window treatments, automotive applications,
`namely, headliners and convertible tops, and sports, athletic, tote and golf bags,”
`with a date of first use of 1961 and registered on the Principal Register May 22,
`2018.
`
` Reg. No. 5,268,851 – SUNBRELLA CONTOUR for “fabrics in the piece for
`shade applications, namely, for use in the manufacture of awnings, umbrellas,
`pergolas, loggias, shade sails, windscreens, cabanas, canopies, tents, draperies,
`sheers, window treatments, boat covers and tops, cockpit awnings, cushions,
`indoor and outdoor furniture,” with a date of first use of 2015 and registered on
`the Principal Register August 22, 2017.
`
`
`
`3
`
`

`

`
`
` Reg. No. 3,731,230 – SUNBRELLA & Umbrella Canopy Logo Design for
`“fabrics sold in the piece for use in producing awnings, sun and windscreens,
`tents, canopies, boat covers and tops, indoor and outdoor furniture, beach
`umbrellas, area rugs, draperies, sheers, window treatments,” with a date of first
`use of 2008 and registered on the Principal Register December 29, 2009.
`
` Reg. No. 3,652,524 – SUNBRELLA & Umbrella Canopy Logo Design for
`“fabrics sold in the piece for use in producing awnings, sun and windscreens,
`tents, canopies, boat covers and tops, indoor and outdoor furniture, beach
`umbrellas, area rugs, draperies, sheers, window treatments,” with a date of first
`use of 2008 and registered on the Principal Register July 7, 2009.
`
` Reg. No. 2,966,133 – SUNBRELLA “PLUS” for “fabrics sold in the piece for
`use in producing awnings, sun and windscreens, tents, canopies, boat covers and
`tops, indoor and outdoor furniture and beach umbrellas,” with a date of first use of
`1991 and registered on the Principal Register July 12, 2005.
`
` Reg. No. 709,110 – SUNBRELLA for “fabrics for awnings, furniture, handbags
`and sportswear,” with a date of first use of 1959 and registered on the Principal
`Register on December 27, 1960.
`
`Photocopies of the foregoing registrations are attached as Exhibit A.
`
`
`
`14.
`
`Those of the above-listed registrations more than five years old have become
`
`incontestable and are conclusive evidence of the validity of the registered mark, Opposer’s
`
`ownership thereof and of Opposer’s exclusive right to use the mark as provided by Section 33(b)
`
`of the Federal Trademark Act.
`
`
`
`15.
`
`Opposer has invested significant sums advertising and promoting the sale of
`
`goods offered under the SUNBRELLA Mark. Based on the extensive, exclusive and continuous
`
`use of the SUNBRELLA Mark by Opposer, the relevant consuming public has come to
`
`recognize the SUNBRELLA Mark as being used by Opposer and to associate and identify the
`
`SUNBRELLA Mark with Opposer. Opposer has obtained and enjoys an exceedingly valuable
`
`reputation and goodwill symbolized by the SUNBRELLA Mark.
`
`16.
`
`The opposed application covers the designation SUNDELLA for clothing
`
`products.
`
`
`
`4
`
`

`

`
`
`17.
`
`The designation SUNDELLA is highly similar to Opposer’s SUNBRELLA Mark
`
`in terms of appearance, sound and commercial impression as to be likely, when applied to the
`
`goods identified in the challenged applications, to cause confusion and mistake and to deceive.
`
`18.
`
`The goods are issue in this opposition are closely related.
`
`19.
`
`SUNDELLA is confusingly similar to Opposer’s SUNBRELLA Mark so that
`
`registration of SUNDELLA would be inconsistent with and damaging to Opposer’s prior and
`
`exclusive rights in the SUNBRELLA Mark as applied to the goods with which it is used.
`
`20.
`
`Opposer will be damaged by Applicant’s registration of SUNDELLA.
`
`WHEREFORE, Opposer prays that its opposition be sustained and that the opposed
`
`application be denied registration.
`
`Please recognize as attorneys for Opposer in this proceeding Christopher Kelly and
`
`Adrienne Kosak and the firm WILEY REIN LLP, 1776 K Street, N.W., Washington, D.C.
`
`20006.
`
`This opposition is being filed by the undersigned attorneys at law, duly authorized to
`
`represent Opposer in this proceeding, pursuant to Trademark Rule 2.101(b).
`
`Respectfully submitted,
`
`GLEN RAVEN, INC.
`
`
`
`
`By: /Christopher Kelly/
`Christopher Kelly
`Adrienne Kosak
`WILEY REIN LLP
`1776 K Street, N.W.
`Washington, D.C. 20006
`(202) 719-7000
`
`Attorneys for Opposer
`
`
`
`
`
`
`
`Date: October 25, 2021
`
`
`
`5
`
`

`

`EXHIBIT A
`EXHIBIT A
`
`

`

`ited States of Ame,
`Gnited States Patent and Trademark Office
`lta
`
`SUNBRELLA
`
`Reg. No. 5,474,228
`
`Registered May 22, 2018
`
`Glen Raven, Inc. (NORTH CAROLINA CORPORATION)
`1831 North Park Avenue
`Glen Raven, NORTH CAROLINA27217
`
`  ÿ ÿ
` 
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`9:;9ÿ0<=>?ÿ7)=@ÿ5*%&A%
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`465DDÿB;EÿF)=&
`  ! "ÿ   ÿ
`G,(D2ÿHDIÿJKLK9MMJNÿ,0ÿ41OOI(4IÿJKLK9MMJ
`465DDBLEG)P=Q-RS<=>?%T)&AS)->A=%<S)U&Q&VR+RA&)&WUQ&WR-=%%&R+R?)W%R)Q$R+>%&>R+
`-)&<XQ%R+P<)>-<*%=R)&W><XR+Q&W<<=)&W<A>W<<=SA=&Q>A=%+P%)-?+V)=W%&)&WT)=@%>
`ATP=%$$)R+-AR?Q<&R+XQ$$<UR+)=%)=AVR+W=)X%=Q%R+R?%%=R+UQ&W<U>=%)>T%&>R+)A><T<>Q*%
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`G,(D2ÿHDIÿYYKYYK9MJ9Nÿ,0ÿ41OOI(4IÿYYKYYK9MJ9
`23IO5(Z410D,D2D1GD250[5([435(542I(D\,231H2465,O2150]
`75(2,4H65(ÿG102ÿD2]6I+ÿD,^Iÿ1(ÿ4161(
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`DI(.ÿ01.ÿ:CKJ9;+C_;+ÿG,6I[ÿYMK9MKBY9C
`
`CLASS 24: Fabrics for the manufacture of awnings, sun and windscreens, shadesails, tents,
`canopies, boat covers and tops,
`indoor and outdoor furniture, beach, garden and market
`umbrellas, cushions, pillows, area rugs, draperies, sheers, window treatments, automotive
`applications, namely, headliners and convertible tops, and sports, athletic, tote and golf bags
`
`Int. Cl.: 23, 24
`
`Trademark
`
`Principal Register
`
`CLASS 23: yarn
`
`FIRST USE6-4-1996; INCOMMERCE6-4-1996
`
`FIRST USE 00-00-1961; INCOMMERCE00-00-1961
`
`THE MARK CONSISTS OF STANDARD CHARACTERS WITHOUT CLAIM TO ANY
`
`PARTICULAR FONTSTYLE, SIZE OR COLOR
`
`OWNEROFU.S. REG. NO.5017224, 0709110, 3652524
`
`SER.NO.87-613,753, FILED 09-19-2017
`
`
`
`Director of the United States
`
`Patent and Trademark Office
`
`

`

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`-0T(1&%]ÿY,-ÿ-)$,%&[0+ÿ%a)Y,&,&#ÿ)110(&%]
`
`

`

`ited States of Amery,
`Anited States Patent and Trademark Office
`lly
`
`etnunbrella
`
`
`Reg. No. 3,731,230 GLEN RAVEN,INC. (NORTH CAROLINA CORPORATION)
`Registered Dec. 29. 2009 183 1 NORTH PARK AVENUE
`GLEN RAVEN,
`NC 27217
`
`
`
`R: FABRICS SOLD IN THE PIECE FOR USE IN PRODUCING AWNINGS, SUN AND
`Int. CL: 24 ro
`2
`
`WINDSCREENS.
`
`TENTS, CANOPIES, BOAT COVERS AND TOPS, INDOORAND OUTDOOR
`
`
`
`
`
`URNITURE, BEACIT UMBRELLAS, AREA RUGS, DRAPERIES, SI
`"RS, WINDOW
`
`TRADEMARK 1p
`EATMENTS, IN CLASS 24 (U.S. CLS. 42 AND 50).
`PRINCIPAL REGISTER
`
` i
`
`FIRST USE 10-21-2008; IN COMMERCE 10-21-2008.
`
`OWNEROF U.S. REG. NOS. 2,761,048, 3,118,723 AND OTHERS.
`
`THE COLOR(S) ORANGEIS/ARE CLAIMED AS A FEATURE OF THE MARK.
`
`THE MARK CONSISTS OF A STYLIZED UMBRELLA DESIGN AND THE WORD "SUN-
`BRELLA", ALL IN ORANGE
`
`
`
`
`
`
`
`n
`
`ER. NO. 77-749,650, FILED 6-2-2009.
`
`
`
`SHANNON TWOHIG, EXAMINING ATTORNEY
`
`
`
`Director ofthe United States Patent and ‘I’sademarkOffice
`
`

`

`Int. Cl.: 24
`
`Prior U.S. Cls.: 42 and 50
`
`United States Patent and Trademark Office
`
`Reg. No. 3,652,524
`Registered July 7, 2009
`
`TRADEMARK
`PRINCIPAL REGISTER
`
`it,sunbrella
`
`GLEN RAVEN, INC. (NORTH CAROLINA COR-
`PORATION)
`1831 NORTH PARK AVENUE
`GLEN RAVEN, NC 27217
`
`FOR: FABRICS SOLD IN THE PIECE FOR USE IN
`PRODUCING AWNINGS, SUN AND WIND-
`SCREENS, TENTS, CANOPIES, BOAT COVERS
`AND TOPS,
`INDOOR AND OUTDOOR FURNI-
`TURE, BEACH UMBRELLAS, AREA RUGS, DRAP-
`ERIES, SHEERS, WINDOW TREATMENTS,
`IN
`CLASS 24 (U.S. CLS. 42 AND 50).
`
`FIRST USE 10-21-2008; IN COMMERCE10-21-2008.
`
`OWNER OF US. REG. NOS. 709,110, 2,028,355,
`AND OTHERS.
`
`THE MARK CONSISTS OF "SUNBRELLA" &
`STYLIZED UMBRELLA DESIGN.
`
`SN 77-556,137, FILED 8-26-2008.
`
`KATHLEEN LORENZO, EXAMINING ATTORNEY
`
`

`

`Int. Cl.: 24
`
`Prior U.S. Cls.: 42 and 50
`
`United States Patent and Trademark Office
`
`Reg. No. 2,966,133
`Registered July 12, 2005
`
`TRADEMARK
`PRINCIPAL REGISTER
`
`SUNBRELLA “PLUS”
`
`GLEN RAVEN, INC. (NORTH CAROLINA COR-
`PORATION)
`1831 NORTH PARK AVENUE
`GLEN RAVEN,NC 27217
`
`FOR: FABRICS SOLD IN THE PIECE FOR USE IN
`PRODUCING AWNINGS, SUN AND WIND-
`SCREENS, TENTS, CANOPIES, BOAT COVERS
`AND TOPS, INDOOR AND OUTDOOR FURNITURE
`AND BEACH UMBRELLAS, IN CLASS 24 (U.S. CLS.
`42 AND 50).
`
`THE MARK CONSISTS OF STANDARD CHAR-
`ACTERS WITHOUT CLAIM TO ANYPARTICULAR
`FONT, STYLE, SIZE, OR COLOR.
`
`OWNER OF US. REG. NOS. 1,815,959, 2,028,355
`AND OTHERS.
`
`SER. NO. 76-596,398, FILED 6-9-2004.
`
`FIRST USE6-0-1991; IN COMMERCE6-0-1991.
`
`VERNABETH RIRIE, EXAMINING ATTORNEY
`
`

`

`
`
`
`
`UnitedStatesOfMCEpega pe2,198Patent
`
`PRINCIPAL REGISTER
`Trademark
`
`Ser. No. 96,329,filed May 3, 1960
`
`Glen Raven Cotton Mills, Inc. (North Carolina corpora-
`tion)
`Glen Raven, N.C.
`
`For: FABRICS FOR AWNINGS, FURNITURE,
`HANDBAGS, AND SPORTSWEAR,in CLASS 42.
`First use Dec. 11, 1959; in commerce Dec. 11, 1959.
`
`

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