`ESTTA1208043
`05/10/2022
`
`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
`
`Wake Forest University
`
`Granted to date
`of previous ex-
`tension
`
`Address
`
`Attorney informa-
`tion
`
`05/11/2022
`
`1834 WAKE FOREST ROAD
`WINSTON-SALEM, NC 27106
`UNITED STATES
`
`DONALD R PIPER JR
`DANN, DORFMAN, HERRELL AND SKILLMAN, P. C.
`1601 MARKET STREET
`SUITE 2400
`PHILADELPHIA, PA 19103
`UNITED STATES
`Primary email: docketclerk@ddhs.com
`Secondary email(s): docketclerk@ddhs.com, dpiper@ddhs.com,
`nhaun@ddhs.com, fzapiec@ddhs.com
`2155634100
`
`Docket no.
`
`0101-O089
`
`Applicant information
`
`Application no.
`
`90619229
`
`Opposition filing
`date
`
`Applicant
`
`05/10/2022
`
`Wieberg, Kimberly
`3596 BRAGG VALLEY LANE
`WAKE FOREST, NC 27587
`UNITED STATES
`
`Goods/services affected by opposition
`
`Publication date
`
`01/11/2022
`
`Opposition period
`ends
`
`05/11/2022
`
`Class 025. First Use: Mar 19, 2021 First Use In Commerce: Mar 20, 2021
`All goods and services in the class are opposed, namely: Apparel, namely, tops as clothing, bottoms
`as clothing, coats, jacket, dresses,socks, headwear; hats
`
`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.
`
`1247299
`
`Application date
`
`08/24/1982
`
`
`
`Register
`
`Principal
`
`Registration date
`
`08/02/1983
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`WAKE FOREST UNIVERSITY
`
`NONE
`
`Class 035. First use: First Use: Jun 12, 1967 First Use In Commerce: Jun 12,
`1967
`Operation of a Personnel Placement Service for Students and Graduates of the
`University
`Class 041. First use: First Use: 1967 First Use In Commerce: 1967
`Educational Services-Namely, Providing Instruction at the University Level, Con-
`ducting Classes and Seminars, Reference and Lending Library Services for Oth-
`ers;Entertainment Services-Namely, Presentation of Sporting Events, Lectures,
`Concerts, and Theater Productions
`Class 042. First use: First Use: 1967 First Use In Commerce: 1967
`Conducting Research for Others in the Fields of Science and the Humanities
`
`U.S. application/ registration
`no.
`
`Register
`
`Registration date
`
`Mark
`
`Goods/services
`
`U.S. application/ registration
`no.
`
`Register
`
`Registration date
`
`Mark
`
`Goods/services
`
`Application date
`
`NONE
`
`NONE
`
`NONE
`
`NONE
`
`WAKE FOREST UNIVERSITY
`
`CLOTHING AND APPAREL INCLUDING TOPS AS CLOTHING,
`BOTTOMS AS CLOTHING, COATS, JACKETS, DRESSES, SOCKS,
`HEADWEAR AND HATS
`
`Application date
`
`NONE
`
`NONE
`
`NONE
`
`NONE
`
`WAKE FOREST
`
`CLOTHING AND APPAREL INCLUDING TOPS AS CLOTHING,
`BOTTOMS AS CLOTHING, COATS, JACKETS, DRESSES, SOCKS,
`HEADWEAR AND HATS
`
`Attachments
`
`Notice of Opposition.pdf(64675 bytes )
`
`Signature
`
`/DONALD R PIPER JR/
`
`Name
`
`Date
`
`DONALD R PIPER JR
`
`05/10/2022
`
`
`
`
`
`
`
`
`
`
`
`
`
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`
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`
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`IN THE UNITED STATES PATENT AND TRADEMARK
`OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL
`BOARD
`
`In the matter of U.S. Trademark Application Serial No. 90/619,229 for the mark WAKE
`FOREST’ISH owned by KIMBERLY WIEBERG.
`
`Wake Forest University,
`
`
`
`
`
`
`
`
`
`
`
` Opposition No.
`
`
`
`
`
`
`
`
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`Opposer,
`
`v.
`
`
`
`§
`§
`§
`§
`§
`§
`§
` Kimberly Wieberg
`§
`§
`
`Applicant.
`
`
`NOTICE OF OPPOSITION
`
`Opposer, Wake Forest University, a corporation organized under the laws of North
`
`Carolina, having a business address of 1834 Wake Forest Road, Winston-Salem, North
`
`Carolina 27106 (hereinafter “Opposer”), hereby files this Notice of Opposition pursuant to
`
`Section 13 of the Lanham Act, 15 U.S.C. § 1063, and under 37 C.F.R. § 2.101(b) and
`
`T.B.M.P. § 309. Opposer believes it will be damaged by registration of the mark WAKE
`
`FOREST’ISH, as shown in U.S. Trademark Application Serial No. 90/619,229 in
`
`International Class 25 (hereinafter, “Opposed Application” or “Opposed Mark”) filed by
`
`KIMBERLY WIEBERG (hereinafter, “Applicant”), and hereby opposes the same.
`
`
`As grounds of opposition, Opposer asserts that:
`
`
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`1
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` DESCRIPTION OF THE OPPOSED APPLICATION
`
`1.
`
`Applicant filed the Opposed Application on April 1, 2021, based on asserted dates
`
`of actual first use of the Opposed Mark on March 19, 2021, and in commerce on March 20,
`
`2021.
`
`2.
`
`Applicant seeks registration of the standard character word mark WAKE
`
`FOREST’ISH in connection with goods in International Class 25 for “Apparel, namely,
`
`tops as clothing, bottoms as clothing, coats, jacket, dresses, socks, headwear; hats.”
`
`3.
`
`The Opposed Application was published for opposition in the Official Gazette on
`
`January 11, 2022.
`
`4.
`
`On February 7, 2022, Opposer requested, and the Trademark Trial and Appeal
`
`Board (the “Board”) granted, a 90-day extension of time, until May 11, 2022, for Opposer
`
`to oppose the Opposed Application.
`
`
`
`5.
`
`OPPOSER
`
`
`Opposer, Wake Forest University, is a nationally recognized university that was
`
`founded in 1834 and has been in operation at its campus in Winston-Salem, North Carolina
`
`since 1956. Wake Forest University is highly ranked as one of the top thirty national
`
`universities in the country. Wake Forest University is and has been widely recognized over
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`the decades for its academic and athletic programs and activities in association with and
`
`under the names, trade names, and trademarks “Wake Forest University” and “Wake
`
`Forest.”
`
`6.
`
`Opposer has specifically offered and provided educational services such as
`
`instruction at the university level across many fields of study and entertainment services
`
`such as intercollegiate sports events as well as lectures, concerts and theater productions
`
`2
`
`
`
`
`
`
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`under the “Wake Forest University” and “Wake Forest” names, trade names, and
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`trademarks for decades.
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`7.
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`As is common for colleges or universities, Opposer has also promoted, marketed,
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`advertised, offered and sold products in commerce under the “Wake Forest University” and
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`“Wake Forest” names, trade names, and trademarks for decades including many different
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`types of clothing and apparel and specifically including the products set forth in Class 25
`
`of the Opposed Application (collectively hereinafter “Opposer’s Wake Forest Clothing and
`
`Apparel”). Students, alumni, fans and the public have purchased and worn over the
`
`decades, and continue to purchase and wear, all types of clothing and apparel under the
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`“Wake Forest University” and “Wake Forest” names, trade names, and trademarks.
`
`
`OPPOSER’S MARKS AND NAMES
`
`OPPOSER’S
` “WAKE FOREST UNIVERSITY”
` TRADEMARK REGISTRATION
`
`8.
`
`Opposer is the owner of U.S. Trademark Registration No. 1,247,299 dated August
`
`2, 1983, issuing from Trademark Application Serial No. 73/381,628, filed August 24, 1982
`
`for the mark WAKE FOREST UNIVERSITY for use in connection with “Educational
`
`Services-Namely, Providing Instruction at the University Level, Conducting Classes and
`
`Seminars, Reference and Lending Library Services for Others; Entertainment Services-
`
`Namely, Presentation of Sporting Events, Lectures, Concerts, and Theater Productions” in
`
`Class 41 (hereinafter “Opposer’s Registration” or “Opposer’s Registered Mark”). A
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`printout from TSDR of the details of Opposer’s Registration is attached hereto as Exhibit
`
`A. Opposer’s Registration has become incontestable under Section 15 of the Lanham Act.
`
`9.
`
`Opposer has been for decades and is currently promoting, marketing, advertising,
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`offering, using, and rendering in commerce the services recited in class 41 of Opposer’s
`
`Registration.
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`3
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`10.
`
`Opposer’s Wake Forest Clothing and Apparel, which includes the goods recited in
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`class 25 of the Opposed Application, are related and even highly related to Opposer’s
`
`services set forth in class 41 of Opposer’s Registration.
`
`OPPOSER’S
`“WAKE FOREST UNIVERSITY”
`COMMON LAW RIGHTS
`
`11.
`
`Opposer is the owner of common law trademark, trade name and analogous
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`trademark rights in and to the name “Wake Forest University” for use on or in connection
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`with Opposer’s Wake Forest Clothing and Apparel.
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`12.
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`For decades, and at least prior to Applicant’s filing date and Applicant’s dates of
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`first use, Opposer adopted and has used the name, trade name and trademark “Wake
`
`Forest University” on or in connection with Opposer’s Wake Forest Clothing and
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`Apparel to indicate the source or origin of such clothing and apparel.
`
`13.
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`For decades, and at least prior to Applicant’s filing date and dates of first use,
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`Opposer has promoted, marketed, advertised, offered, used and sold Opposer’s Wake
`
`Forest Clothing and Apparel, which includes the goods recited in class 25 of the Opposed
`
`Application, under the “Wake Forest University” mark and name, and continues to do so,
`
`to indicate the source or origin of Opposer’s Wake Forest Clothing and Apparel.
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`14.
`
`Opposer has acquired common law trademark rights and trade name rights and
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`analogous trademark rights in the name “Wake Forest University” for use on or in
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`connection with clothing and apparel including the goods set forth in class 25 of the
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`Opposed Application.
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`4
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`OPPOSER’S
`“WAKE FOREST”
`COMMON LAW RIGHTS
`
`15.
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`Opposer is the owner of common law trademark, trade name and analogous
`
`trademark rights in and to the name “Wake Forest” for use on or in connection with
`
`Opposer’s Wake Forest Clothing and Apparel.
`
`16.
`
`For decades, and at least prior to Applicant’s filing date and Applicant’s dates of
`
`first use, Opposer adopted and has used the name, trade name and trademark “Wake
`
`Forest” on or in connection with Opposer’s Wake Forest Clothing and Apparel to indicate
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`the source or origin of such clothing and apparel.
`
`17.
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`For decades, and at least prior to Applicant’s filing date and dates of first use,
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`Opposer has promoted, marketed, advertised, offered, used and sold Opposer’s Wake
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`Forest Clothing and Apparel, which includes the goods recited in class 25 of the Opposed
`
`Application, under the “Wake Forest” mark and name, and continues to do so, to indicate
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`the source or origin of Opposer’s Wake Forest Clothing and Apparel.
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`18.
`
`Opposer has acquired common law trademark rights and trade name rights and
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`analogous trademark rights in the name “Wake Forest” for use on or in connection with
`
`clothing and apparel including the goods set forth in class 25 of the Opposed Application.
`
`
`
` PRIORITY AND LIKELIHOOD OF CONFUSION
`
`PRIORITY OF OPPOSER
`
`19.
`
`As set forth above, Opposer owns an incontestable U.S. Trademark Registration
`
`dated August 2, 1983, for the mark “Wake Forest University.” Opposer’s Registration is
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`dated prior to Applicant’s filing date and prior to any date of first use alleged by Applicant.
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`20.
`
`Opposer has priority over Applicant with respect to the registered Wake Forest
`
`University mark of Opposer based on the fact that Opposer’s Registration is dated years
`
`5
`
`
`
`
`
`prior to the filing date of the Opposed Application on April 1, 2021, and Opposer’s
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`Registration is incontestable and more than 5 years old.
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`21.
`
`As set forth above, Opposer is also the owner of common law trademark rights,
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`trade name rights and analogous trademark rights in the marks and names “Wake Forest
`
`University” and “Wake Forest” for use on clothing and apparel including the goods set
`
`forth in the Opposed Application. Opposer’s common law trademark rights, trade name
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`rights and analogous trademark rights in the marks and names “Wake Forest University”
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`and “Wake Forest” are prior to Applicant’s filing date and the dates of first use alleged by
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`Applicant.
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`22.
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`On information and belief, even if Applicant has commenced actual use of the
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`Opposed Mark in the United States on the goods set forth in the Opposed Application, any
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`such date of actual first use by Applicant is not prior to each or any of Opposer’s common
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`law trademark rights, trade name rights or analogous trademark rights in the names “Wake
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`Forest University” or “Wake Forest” for use in connection with Opposer’s Wake Forest
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`Clothing and Apparel.
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`23.
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`Opposer therefore has priority over Applicant based on the fact that Opposer has
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`acquired common law trademark rights, common law trade name rights and analogous
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`trademark rights in the “Wake Forest University” and “Wake Forest” names and marks in
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`connection with clothing and apparel including the goods set forth in the Opposed
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`Application from dates prior to Applicant’s filing date and alleged dates of first use by
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`Applicant of the Opposed Mark as well as, upon information and belief, prior to any actual
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`date of first use by Applicant of the Opposed Mark on the products set forth in the Opposed
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`Application.
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`6
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`LIKELIHOOD OF CONFUSION
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`Comparison of Marks and Names
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`24.
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`Applicant’s Opposed Mark “Wake Forest’ish” is confusingly similar to Opposer’s
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`“Wake Forest” and “Wake Forest University” marks and names. The dominant portion of
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`Applicant’s Opposed Mark is “Wake Forest.” In comparison, the dominant portion of
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`Opposer’s Registered Mark is also “Wake Forest.” Likewise, the dominant portion of
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`Opposer’s common law trademark, trade name and analogous trademark rights name of
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`“Wake Forest University” is also “Wake Forest.” Moreover, the entirety, and not just the
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`dominant portion, of Opposer’s common law trademark, trade name and analogous
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`trademark rights name of “Wake Forest” is “Wake Forest.” Accordingly, the dominant
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`portion of the Opposed Mark is identical to the dominant portion of Opposer’s “Wake
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`Forest University” marks and names and is identical to the entirety of Opposer’s “Wake
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`Forest” mark and name.
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`25.
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`Applicant’s Opposed Mark is confusingly similar in sound, sight and/or impression
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`to each of Opposer’s “Wake Forest” and “Wake Forest University” marks and names.
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`Comparison of Goods and Services
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`26.
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`Applicant’s goods as recited in the Opposed Application are identical to or are
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`substantially similar to Opposer’s Wake Forest Clothing and Apparel. Indeed, Opposer’s
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`Wake Forest Clothing and Apparel includes the goods set forth in the Opposed Application.
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`27.
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`Applicant’s goods as recited in the Opposed Application are also related or are
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`highly related to Opposer’s services under class 41 of Opposer’s Registration. Indeed,
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`Wake Forest University offers and sells various clothing and apparel including the goods
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`set forth in the Opposed Application under and in association with Opposer’s “Wake Forest
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`University” and “Wake Forest” marks and names. It is common practice for universities
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`and colleges to market and sell various clothing and apparel under their respective college
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`names. Therefore, the goods recited in Opposed Application are highly related to the
`7
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`services set forth in class 41 of Opposer’s Registration.
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`28.
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`Applicant’s goods as recited in the Opposed Application are marketed to, and will
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`be encountered by, the same class of consumers as Opposer’s Wake Forest Clothing and
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`Apparel. Again, Opposer’s Wake Forest Clothing and Apparel includes the goods set forth
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`in the Opposed Application.
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`29.
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`In view of the similarity of the Opposer’s “Wake Forest” and “Wake Forest
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`University” marks and names in comparison to Applicant’s Opposed Mark, in combination
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`with the identical, similar or related nature of Applicant’s goods relative to Opposer’s
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`Wake Forest Clothing and Apparel and the related nature of Applicant’s goods with respect
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`to Opposer’s services under class 41 of Opposer’s Registration, a likelihood of confusion,
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`mistake or deception exists.
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`30.
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`Applicant’s Opposed Mark so resembles each and all of Opposer’s “Wake Forest”
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`and “Wake Forest University” marks and names as to be likely, when used on or in
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`connection with Applicant’s goods, to cause confusion, or to cause mistake, or to deceive.
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`31.
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`Purchasers and prospective purchasers are likely to falsely believe that Applicant’s
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`goods offered under the Opposed Mark are sponsored, endorsed, or approved by Opposer,
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`or are in some way affiliated, connected or associated with Opposer.
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`32.
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`Registration of the Opposed Mark by Applicant would be a source of damage or
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`harm to Opposer due to the likelihood of confusion between Applicant or Applicant’s
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`goods and Opposer or Opposer’s goods or services.
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`8
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`WHEREFORE, Opposer requests that registration of the mark shown in U.S.
`
`Trademark Application Serial No. 90/619,229 be denied and that this Opposition be
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`sustained in favor of Opposer.
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`
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`
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`Respectfully submitted,
`
`By: / Donald R. Piper Jr./
`
`
`
`Donald R. Piper Jr (PTO #29,337)
`1601 Market Street, Suite 2400
`Philadelphia, PA 19103-2307
`Telephone: 215.563.4100
`Facsimile: 215.563.4044
`Email: dockclerk@ddhs.com;
`dpiper@ddhs.com
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`ATTORNEYS FOR OPPOSER
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`9
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`CERTIFICATE OF TRANSMISSION UNDER TBMP 110
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`I HEREBY CERTIFY that a Notice of Opposition and Exhibit A thereto are being
`filed electronically through http://estta.uspto.gov via the Trademark Trial and Appeal
`Board Electronic Filing System on Tuesday, the 10th day of May 2022.
`
` /Frances R Zapiec/
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`10
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`Exhibit A
`Exhibit A
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`11
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`
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`Generated on: This page was generated by TSDR on 2022-05-04 15:47:23 EDT
`
`Mark: WAKE FOREST UNIVERSITY
`
`US Serial Number: 73381628
`
`US Registration
`Number:
`
`1247299
`
`Register: Principal
`
`Mark Type: Service Mark
`
`TM5 Common Status
`Descriptor:
`
`Application Filing
`Date:
`
`Aug. 24, 1982
`
`Registration Date: Aug. 02, 1983
`
`LIVE/REGISTRATION/Issued and Active
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`The trademark application has been registered with the Office.
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`Status: The registration has been renewed.
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`Status Date: Aug. 02, 2013
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`Publication Date:May 10, 1983
`
`
`Mark Information
`
`Mark Literal
`Elements:
`
`WAKE FOREST UNIVERSITY
`
`Standard Character
`Claim:
`
`No
`
`Mark Drawing
`Type:
`
`1 - TYPESET WORD(S) /LETTER(S) /NUMBER(S)
`
`Disclaimer: No claim is made to the exclusive right to use the word "University", apart from the mark as shown.
`
`Related Properties Information
`
`Claimed Ownership
`of US
`Registrations:
`
`07145220
`
`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: Operation of a Personnel Placement Service for Students and Graduates of the University
`
`International
`Class(es):
`
`035 - Primary Class
`
`Class Status: ACTIVE
`
`Basis: 1(a)
`
`U.S Class(es): 101
`
`First Use: Jun. 12, 1967
`
`Use in Commerce: Jun. 12, 1967
`
`For: Educational Services-Namely, Providing Instruction at the University Level, Conducting Classes and Seminars, Reference and Lending
`Library Services for Others; Entertainment Services-Namely, Presentation of Sporting Events, Lectures, Concerts, and Theater
`Productions
`
`
`
`International
`Class(es):
`
`041 - Primary Class
`
`Class Status: ACTIVE
`
`Basis: 1(a)
`
`First Use: 1967
`
`U.S Class(es): 107
`
`Use in Commerce: 1967
`
`For: Conducting Research for Others in the Fields of Science and the Humanities
`
`International
`Class(es):
`
`042 - Primary Class
`
`Class Status: ACTIVE
`
`Basis: 1(a)
`
`First Use: 1967
`
`Filed Use: Yes
`
`Filed ITU: No
`
`Filed 44D: No
`
`Filed 44E: No
`
`Filed 66A: No
`
`Filed No Basis: No
`
`U.S Class(es): 100
`
`Use in Commerce: 1967
`
`Basis Information (Case Level)
`
`Currently Use: Yes
`
`Currently ITU: No
`
`Currently 44E: No
`
`Currently 66A: No
`
`Currently No Basis: No
`
`Current Owner(s) Information
`
`Owner Name: Wake Forest University
`
`Owner Address: 1834 WAKE FOREST RD.
`Winston-Salem, NORTH CAROLINA UNITED STATES 27106
`
`Legal Entity Type: CORPORATION
`
`State or Country
`Where Organized:
`
`NORTH CAROLINA
`
`Attorney/Correspondence Information
`
`Attorney Name: Lynn C.F. Fote
`
`Docket Number: 0101-T04307U
`
`Attorney of Record
`
`Attorney Primary
`Email Address:
`
`docketclerk@ddhs.com
`
`Attorney Email
`Authorized:
`
`Yes
`
`Correspondent
`
`Correspondent
`Name/Address:
`
`Lynn C.F. Fote
`Dann Dorfman Herrell and Skillman, P.C.
`1601 Market Street
`Suite 2400
`Philadelphia, PENNSYLVANIA UNITED STATES 19103-2307
`
`Phone: 215-563-4100
`
`Fax: 215-563-4044
`
`Correspondent e-
`mail:
`
`docketclerk@ddhs.com
`
`Correspondent e-
`mail Authorized:
`
`Yes
`
`Domestic Representative - Not Found
`Prosecution History
`
`Date
`
`Description
`
`Aug. 02, 2013
`
`NOTICE OF ACCEPTANCE OF SEC. 8 & 9 - E-MAILED
`
`Aug. 02, 2013
`
`REGISTERED AND RENEWED (SECOND RENEWAL - 10 YRS)
`
`Aug. 02, 2013
`
`REGISTERED - SEC. 8 (10-YR) ACCEPTED/SEC. 9 GRANTED
`
`Aug. 02, 2013
`
`CASE ASSIGNED TO POST REGISTRATION PARALEGAL
`
`Jul. 18, 2013
`
`TEAS SECTION 8 & 9 RECEIVED
`
`Apr. 25, 2008
`
`CASE FILE IN TICRS
`
`Oct. 25, 2003
`
`REGISTERED AND RENEWED (FIRST RENEWAL - 10 YRS)
`
`Oct. 25, 2003
`
`REGISTERED - SEC. 8 (10-YR) ACCEPTED/SEC. 9 GRANTED
`
`Proceeding
`Number
`
`68502
`
`68502
`
`68502
`
`
`
`Jul. 23, 2003
`
`REGISTERED - COMBINED SECTION 8 (10-YR) & SEC. 9 FILED
`
`Jul. 23, 2003
`
`PAPER RECEIVED
`
`Jun. 13, 1989
`
`REGISTERED - SEC. 8 (6-YR) ACCEPTED & SEC. 15 ACK.
`
`Feb. 22, 1989
`
`REGISTERED - SEC. 8 (6-YR) & SEC. 15 FILED
`
`Aug. 02, 1983
`
`REGISTERED-PRINCIPAL REGISTER
`
`May 10, 1983
`
`PUBLISHED FOR OPPOSITION
`
`Aug. 02, 1983
`
`REGISTERED-PRINCIPAL REGISTER
`
`May 10, 1983
`
`PUBLISHED FOR OPPOSITION
`
`Mar. 29, 1983
`
`NOTICE OF PUBLICATION
`
`Mar. 18, 1983
`
`APPROVED FOR PUB - PRINCIPAL REGISTER
`
`Mar. 04, 1983
`
`ASSIGNED TO EXAMINER
`
`TM Staff and Location Information
`
`TM Staff Information - None
`
`File Location
`
`Current Location: GENERIC WEB UPDATE
`
`Date in Location: Aug. 02, 2013
`
`

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