Notice of Opposition

Transcription

1 Trademark Trial and Appeal Board Electronic Filing System. ESTTA Tracking number: ESTTA Filing date: 08/02/2017 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 extension Address The University of Tennessee 08/02/ Andy Holt Tower Knoxville, TN UNITED STATES Attorney information Applicant Information Wade R. Orr Luedeka Neely Group, P.C. P.O. Box 1871 Knoxville, TN UNITED STATES Application No Publication date 04/04/2017 Opposition Filing Date Applicant 08/02/2017 Opposition Period Ends Big E Bodz Productions Crystal Run Dr Sugar Land, TX UNITED STATES Goods/Services Affected by Opposition 08/02/2017 Class 025. First Use: 0 First Use In Commerce: 0 All goods and services in the class are opposed, namely: Hats; Sweatshirts; T-shirts Grounds for Opposition Priority and likelihood of confusion No bona fide intent to use mark in commerce for identified goods or services Dilution by blurring Applicant not rightful owner of mark for identified goods or services Fraud on the USPTO Trademark Act Section 2(d) Trademark Act Section 1(b) Trademark Act Sections 2 and 43(c) Trademark Act Section 1 Marks Cited by Opposer as Basis for Opposition In re Bose Corp., 580 F.3d 1240, 91 USPQ2d 1938 (Fed. Cir. 2009) U.S. Application/ Registra- NONE Application Date NONE

2 tion No. Registration Date Word Mark Goods/Services NONE GBO Clothing U.S. Application No Application Date 10/04/2016 Registration Date NONE Foreign Priority Date Word Mark Design Mark GBO NONE Description of Mark NONE Goods/Services Class 025. First use: First Use: 0 First Use In Commerce: 0 Dresses; Shirts; Sweatshirts; Short-sleeved or long-sleeved t-shirts; Sports caps and hats Attachments topto NoticeOfOpposition.pdf(90650 bytes ) #TMSN.png( bytes ) Signature Name /WadeROrr/ Wade R. Orr Date 08/02/2017

3 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD In re application of ) ) Big E Bodz Productions, LLC ) ) Serial No. 87/186,336 ) Date Filed: September 28, 2016 ) Mark: GBO ATHLETES FIRST & Design ) ) Published in the ) OFFICIAL GAZETTE (Trademarks) on ) April 7, 2017 ) ) Attorney Docket No ) NOTICE OF OPPOSITION TRADEMARK TRIAL AND APPEAL BOARD U.S. Patent and Trademark Office 2900 Crystal Drive Arlington, VA Opposer, the University of Tennessee, believes it will be damaged by registration of the mark of Application Serial No. 87/186,336 filed by the named applicant therein and hereby opposes the same. As grounds for this opposition, it is alleged as follows: 1. On information and belief, Applicant, Big E Bodz Productions, is a limited liability company organized in the state of Texas and having an address of Crystal Run Dr., Sugar Land, TX Opposer is a public, non-profit, educational corporation of the State of Tennessee having a business address at 719 Andy Holt Tower, Knoxville, Tennessee

4 3. On September 28, 2016, Applicant filed Application Serial No. 87/186,336 (hereinafter 336 Application ) in the USPTO under Section 1(b) of the Trademark Act for registration of the mark GBO ATHLETES FIRST & Design (hereinafter Applicant s Mark ). 4. The opposed 336 Application seeks to register Applicant s Mark for Hats; Sweatshirts; T-shirts in International Class 025 (hereinafter Applicant s Goods ). The application was published for opposition in the Official Gazette on September 28, On May 2, 2017, Opposer filed a 90 Day Request for Extension of Time to file a Notice of Opposition requesting up to and including August 2, 2017, to file a Notice of Opposition. On May 2, 2017, the Trademark Trial and Appeal Board granted Opposer s extension request. 5. Prior to the filing date of the opposed 336 Application and before any alleged commencement of use of Applicant s Mark anywhere or in commerce, Opposer and/or its licensees and/or affiliates have offered, sold, and provided and continue to offer, sell and provide in interstate commerce goods and services under the mark GBO, alone and together with other words, letters, colors, and/or designs (hereinafter collectively Opposer s GBO Marks ). 6. Opposer s GBO Marks have been prominently and extensively used and promoted in commerce nationwide since before the filing date of the opposed 336 Application, or before any alleged commencement of use by Applicant of Applicant s Mark anywhere or in commerce for any of Applicant s Goods, for and in connection with goods sold, provided, and marketed nationwide, said goods including, but not limited to, t-shirts and other types of clothing (hereinafter the Opposer s Goods ). Opposer s GBO Marks have also been used in commerce since before the filing date of the opposed 336 Application, or before any alleged commencement of use by Applicant of Applicant s Mark anywhere or in commerce for any of Applicant s Goods, for and in connection with higher education and intercollegiate sports 2

5 (hereinafter Opposer s Services ). As a result of the extensive use and promotion of Opposer s GBO Marks by Opposer and its licensees and affiliates, Opposer is now and for some time has been the owner of strong and valuable common law exclusive rights and goodwill in Opposer s GBO Marks for Opposer s Goods and Services, which rights and goodwill arose and subsisted long before filing of the opposed 336 Application or any earlier use of Applicant s Mark for any of Applicant s Goods. 7. Opposer and its licensees and affiliates have expended considerable time, effort, and expense in using, promoting, advertising, popularizing, and making known Opposer s GBO Marks for and in connection with Opposer s Goods and Services, with the result that Opposer has established extensive and valuable exclusive rights and goodwill in Opposer s GBO Marks as a symbol of a source or origin of Opposer s Goods and Services. 8. Opposer s GBO Marks are distinctive, well known, and famous in commerce in the United States, and are and have been widely known and famous in commerce in the United States since before the filing date of Applicant s 336 Application and since before any alleged earlier use of Applicant s Mark for any of Applicant s Goods. 9. Applicant s Goods are the same as or are related to all or part of Opposer s Goods offered under Opposer s GBO Marks. On information and belief, Applicant s Goods are or will be offered and/or provided under Applicant s Mark through the same channels of trade and advertising media and are or will be directed to the same general class of purchasers as Opposer s Goods and Services offered and provided under Opposer s GBO Marks. 10. Applicant s Mark sought to be registered in the 336 Application so resembles Opposer s GBO Marks as to be likely, when used on, for, or in connection with Applicant s Goods, to cause confusion, or to cause mistake, or to deceive. Purchasers and prospective 3

6 purchasers as well as the public at large are all likely to mistakenly believe that Applicant s Goods offered or sold under Applicant s Mark of the opposed 336 Application are produced, sponsored, endorsed, or approved by the source of Opposer s Goods and/or Services sold, marketed or provided under Opposer s GBO Marks, and/or that the source of Applicant s Goods is in some way affiliated, connected, or associated with the source of Opposer s Goods and/or Services sold, marketed or provided under Opposer s GBO Marks, all to the detriment of and damage to Opposer and its goodwill connected with Opposer s GBO Marks. Registration of Applicant s Mark for the goods of the 336 Application should, therefore, be refused under at least 15 U.S.C. 1052(d) and Registration of Applicant s Mark of the 336 Application would be a further source of damage to Opposer inasmuch as use of Applicant s Mark by Applicant for Applicant s Goods dilutes and/or is likely to dilute the distinctive quality of Opposer s famous GBO Marks to the detriment and damage of Opposer. Registration of Applicant s Mark should, therefore, be refused at least under 15 U.S.C. 1052, 1063, and 1125 in view of Opposer s prior use of and other priority rights in Opposer s GBO Marks for and in connection with Opposer s Goods and Services. 12. Upon information and belief, there was no bona fide intent to use Applicant s Mark by Applicant prior to the filing of the 336 Application and/or there is no present bona fide intent to use Applicant s Mark by Applicant. Registration of Applicant s Mark of the 336 Application should, therefore, be refused under at least 15 U.S.C. 1051(b). 13. Upon information and belief, Applicant made fraudulent statements regarding the ownership of Applicant s Mark in filing the 336 Application. Registration of Applicant s Mark. 4

7 14. Registration of Applicant s Mark would be a still further source of damage to Opposer because it would, among other things, confer upon Applicant various statutory presumptions to which it is not entitled in view of Opposer s prior use in and with respect to Opposer s GBO Marks and its superior rights therein under the federal Trademark Act, Title 15 of the United States Code. 15. WHEREFORE, Opposer, the University of Tennessee, prays that registration of Applicant s Mark of the 336 Application for the goods therein specified be refused. A fee in the amount of $ as required by the Commissioner for Trademarks is filed herewith. The commissioner is authorized to draw on the Deposit Account of Luedeka Neely Group, Account No , if the filing fee is insufficient or if the payment is inadvertently omitted. Respectfully submitted, Date: August 2, 2017 s/wade R. Orr/ Wade R. Orr, Esq., Reg. No. 59,390 LUEDEKA NEELY GROUP, P.C. Attorneys for Opposer P.O. Box 1871 Knoxville, TN (865)

8 CERTIFICATE OF SERVICE This is to certify that a true and exact copy of the foregoing NOTICE OF OPPOSITION is being served on Applicant at its address of record: ernestofit1@yahoo.com Date: August 2, 2017 s/wade R. Orr/ Wade R. Orr 6