Notice of Opposition

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1 Trademark Trial and Appeal Board Electronic Filing System. ESTTA Tracking number: ESTTA Filing date: 12/27/2017 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 Board of Regents of The University of Texas System 12/27/ West 7th Street Austin, TX UNITED STATES Attorney information Applicant Information Alexandra H. Bistline Pirkey Barber PLLC 600 Congress Ave., Suite 2120 Austin, TX UNITED STATES Application No Publication date 08/29/2017 Opposition Filing Date Applicant 12/27/2017 Opposition Period Ends Tan Cha - Hi Tea, Inc. 646 E. Desert Willow Road Azusa, CA UNITED STATES Goods/Services Affected by Opposition 12/27/2017 Class 043. First Use: 0 First Use In Commerce: 0 All goods and services in the class are opposed, namely: Restaurant services, namely, providing of food and beverages for consumption onand off the premises Grounds for Opposition Priority and likelihood of confusion Dilution by blurring False suggestion of a connection with persons, living or dead, institutions, beliefs, or national symbols, or brings them into contempt, or disrepute Mark Cited by Opposer as Basis for Opposition Trademark Act Section 2(d) Trademark Act Sections 2 and 43(c) Trademark Act Section 2(a)

2 U.S. Registration No Application Date 10/01/2012 Registration Date 05/27/2014 Foreign Priority Date Word Mark Design Mark NONE NONE Description of Mark The mark consists of the representationof a human hand with the index and small fingers extended upward and the thumb closed over the middle and ring fingers. Goods/Services Class 016. First use: First Use: 2000/00/00 First Use In Commerce: 2000/00/00 Decals; decorative decals for vehicle windows; stickers Class 025. First use: First Use: 2000/00/00 First Use In Commerce: 2000/00/00 Shirts; t-shirts Attachments #TMSN.png( bytes ) Dkt 1 - Notice of Opposition.pdf( bytes ) Signature Name /Alexandra H. Bistline/ Alexandra H. Bistline Date 12/27/2017

3 In Re Serial No. 87/424,386 Filed: April 25, 2017 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD Mark: Published: August 29, 2017 The Board of Regents of The University of Texas System, Opposer, v. Opposition No. Tan Cha Hi Tea, Inc., Applicant. NOTICE OF OPPOSITION The Board of Regents of the University of Texas System ( Opposer ), a state agency with a principal place of business at 201 West 7th Street, Austin, Texas 78701, believes that it will be damaged by registration of the mark shown in U.S. Serial No. 87/424,386, and hereby opposes same under the provisions of 15 U.S.C As grounds for opposition, Opposer asserts the following: 1. Opposer is a Texas state agency established for the purpose of governing The University of Texas System (the UT System ), a system of highly regarded institutions of higher education, including The University of Texas at Austin ( UT or the University ). The powers and duties of Opposer are set forth generally at Chapter 65 of the Texas Education Code. Specific authority to manage and control the University is conferred upon Opposer by Chapter of the Texas Education Code.

4 2. The flagship academic institution within the UT System is The University of Texas at Austin. Founded in 1883, UT is world-renowned for providing outstanding educational services at the college and graduate levels. The University provides educational programs in a broad spectrum of disciplines, such as marketing, journalism, literature, education, fine arts, liberal arts, and law. In addition to providing high-quality educational services, UT provides entertainment services, such as college athletics events, and related products and services. 3. Through its athletics department and recreational sports division, the University competes in many sports and activities, including football, basketball, baseball, golf, rowing, soccer, softball, swimming and diving, track and field, and volleyball. UT s teams have been highly successful over the years, winning numerous national and conference championships. 4. Annually, UT s college athletics events are attended by hundreds of thousands of fans, and are exhibited through radio, television, and internet broadcast to millions of viewers. 5. UT also operates an extensive trademark licensing program, through which it licenses its trademarks under controlled conditions for use in connection with a wide range of products sold to the public. The University s licensed products are extremely popular, and its licensing program is one of the most successful collegiate licensing programs in the world. 6. In connection with UT s academic and athletic services, and to promote those services through the sale of licensed products and services, the University has adopted and has long and continuously used the design shown below of a hand with the palm facing forward, the index and little fingers extended, and the middle and ring fingers held down with the thumb (the UT Hand Design Mark ). 2

5 7. The UT Hand Design Mark received its origin more than sixty years ago when students and others at UT began using the hand signal, where students and other UT fans raise one hand in the air with the palm facing forward, the index and little finger extended, and the middle and ring fingers held down with the thumb. Representative articles describing the origins of the UT Hand Design Mark are attached hereto as Exhibit A. 8. Opposer uses the UT Hand Design Mark extensively in connection with a wide variety of products and services, including restaurant services, clothing, mugs, kitchen towels, water bottles, ornaments, wall hangings, pillow cases, and bumper stickers. Examples of such uses are attached hereto as Exhibit B. A document provided to licensees of the University s marks containing the UT Hand Design Mark, as well as a number of other marks licensed by the University, is attached hereto as Exhibit C. 9. Opposer s UT Hand Design Mark is inherently distinctive, serving to identify and indicate the source of Opposer s goods and services to the consuming public, and to distinguish Opposer s goods and services from those of others. 10. Additionally, as a result of Opposer s use and promotion of its UT Hand Design Mark, the mark has become distinctive and is recognized by consumers. Opposer has invested significant effort and resources in advertising and promoting the UT Hand Design Mark and the goods and services sold under the mark, with the result that the purchasing public has come to know, 3

6 rely on, and recognize the goods and services of Opposer by the mark. Opposer has established valuable goodwill in its UT Hand Design Mark. 11. Opposer s UT Hand Design Mark is famous within the meaning of 15 U.S.C. 1125(c). 12. In addition to its extensive common law rights, Opposer owns a federal trademark registration for the UT Hand Design Mark covering decals and stickers in Class 16 and shirts in Class 25. See U.S. Reg. No. 4,535,612. This registration is valid and subsisting. 13. Tan Cha Hi Tea, Inc. ( Applicant ) is a California corporation with a principal place of business at 646 E. Desert Willow Road, Azusa, California Applicant filed U.S. Serial No. 87/424,386 ( Application ) pursuant to 15 U.S.C. 1051(b) on April 25, 2017 for the design mark shown below ( Applicant s Mark ) covering Restaurant services, namely, providing of food and beverages for consumption on and off the premises in Class Opposer has priority based on its prior use and registration of the UT Hand Design Mark in the United States. 15. Opposer s UT Hand Design Mark became famous long prior to the filing date of the Application. 16. Applicant s services are identical, or highly similar, to the services for which Opposer has long used its UT Hand Design Mark. 4

7 17. Upon information and belief, Applicant s services will travel in the same or similar channels of trade as Opposer s goods and services, and will be purchased by the same or similar types of consumers who purchase or use Opposer s goods and services. 18. Opposer has not given Applicant permission or approval to use or register Applicant s Mark. 19. Applicant s Mark will be seen as uniquely and unmistakably identifying the University. 20. The fame of the University and its UT Hand Design Mark is such that, should Applicant s Mark be used in connection with Applicant s services, a connection with UT would be presumed. Thus, registration of Applicant s Mark should be refused under 15 U.S.C. 1052(a). 21. Applicant s Mark so resembles Opposer s UT Hand Design Mark as to be likely, when used in connection with the services identified in the Application, to cause confusion, or to cause mistake, or to deceive. Registration therefore should also be refused under 15 U.S.C. 1052(d). 22. Applicant s Mark is likely to cause dilution of Opposer s famous UT Hand Design Mark. Registration therefore should also be refused under 15 U.S.C. 1125(c). 23. Registration of Applicant s Mark on the Principal Register would damage Opposer because it would confer upon Applicant statutory presumptions to which Applicant is not entitled in view of Opposer s longstanding prior use and registration of its UT Hand Design Mark. WHEREFORE, Opposer prays that U.S. Serial No. 87/424,386 be rejected, and that registration of the mark therein be refused. This Notice of Opposition is being filed electronically, along with the filing fee required by 37 C.F.R. 2.6(a)(17). The Commissioner is authorized to draw on the Deposit Account of Pirkey 5

8 Barber PLLC, Account No /UTEX851/AHB, if there is any problem with the processing of the electronically submitted fee. Respectfully submitted, /Alexandra H. Bistline/ Jered E. Matthysse Alexandra H. Bistline PIRKEY BARBER PLLC 600 Congress Avenue, Suite 2120 Austin, Texas (512) ATTORNEYS FOR OPPOSER 6

9 EXHIBIT A

13 EXHIBIT B

19 EXHIBIT C