Estta1134132 05/17/2021 in the United States Patent And

Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov ESTTA Tracking number: ESTTA1134132 Filing date: 05/17/2021 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD Proceeding 91265831 Party Defendant Lana Sports, LLC Correspondence CRAIG E PINKUS Address BOSE MCKINNEY & EVANS LLP 111 MONUMENT CIRCLE STE #2700 INDIANAPOLIS, IN 46204 UNITED STATES Primary Email: [email protected] 317-684-5358 Submission Motion to Amend/Amended Answer or Counterclaim Filer's Name Craig E. Pinkus Filer's email [email protected], [email protected] Signature /Craig E. Pinkus/ Date 05/17/2021 Attachments Amended Answer and Counterclaim - Opposition No 91265831.pdf(647313 bytes ) Exhibit A TSDR records - Oppo No 91265831.pdf(5812950 bytes ) Exhibits B - F to Amended Answer and Counterclaim - Oppo No 91265831. pdf(4446947 bytes ) Exhibits G and H to Amended Answer and Counterclaim - Oppo No 9126583 1.pdf(1897697 bytes ) IN THE UNITED STATES PATENT AND TRADEMARK OFFICE TRADEMARK TRIAL AND APPEAL BOARD NBA PROPERTIES, INC., v. Opposition No. 91265831 LANA SPORTS, LLC, Serial Nos. 88/702,750, 88/705,415, 88/703,294 AMENDED ANSWER In response to “NBA Properties, Inc.’s Motion to Dismiss Lana Sports, LLC’s Counterclaims and Strike Affirmative Defenses,” 13 TTABVUE pp. 1-19 filed April 26, 2021, and pursuant to Fed. R. Civ. Proc. Rule 15(a)(1)(B) and 37 CFR §2.107 and related provisions, Lana Sports, LLC (“Applicant”) amends its Answer, 6 TTABVUE pp. 1-14 filed February 12, 2021 to the Consolidated Notice of Opposition 1 TTABVUE pp. 1-10 filed November 6, 2020 (“complaint”) by NBA Properties, Inc. (“Opposer”) as follows: 1. NBAP is the marketing and licensing arm of the National Basketball Association (“NBA”), a professional basketball league consisting of thirty member teams. NBAP owns, licenses, and protects all of the intellectual property of the NBA and its member teams, including some of the most renowned and immediately recognizable trademarks in professional sports today. 1 4112133_1 Answer: Admitted except to the extent that Opposer’s phrase “protects all of the intellectual property of the NBA” is intended to include “ABA Marks” which is denied. 2. Several decades ago, the NBA merged with another men’s professional basketball league known as the “American Basketball Association” or “ABA,” leading to several ABA teams joining the NBA. Since long before Applicant filed the opposed intent-to-use Applications, NBAP has continuously and extensively used the name AMERICAN BASKETBALL ASSOCIATION, the abbreviation ABA, and related logos (collectively, “ABA Marks”) in commerce in conjunction with a wide range of promotional materials and products, including, without limitation, clothing and/or in association with the NBA’s history and its ABA teams and players. Illustrative examples of NBAP’s current use of the ABA Marks are shown immediately below. Answer: The term “related logos” fails to state a claim. Opposer can rely only on protectable rights in specific applications, registrations, or uses upon which it relies so that among other things the similarity or dissimilarity of the marks in their entireties can be argued and determined by the Board. In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). 2 4112133_1 NBAP has never used AMERICAN BASKETBALL ASSOCIATION or ABA as trade names. AMERICAN BASKETBALL ASSOCIATION PLAYERS ASSOCIATION, ABAPA, and designs have never been objected to and never used by NBAP as identifiers of its goods or services. NBAP was, and is, an adversary of the actual American Basketball Association Players Association through decades of litigation such as American Basketball Association Players Association v. National Basketball Association, 404 F.Supp. 832 (SDNY 1975). It is denied that NBA merged with the ABA, affirmatively, continuously and extensively used the ABA Marks since the alleged merger, and that the merchandise depicted illustrates NBA’s history and “its” ABA teams and players. 3. Through many years of extensive use and promotion of the ABA Marks throughout the world and in the United States, NBAP has developed substantial goodwill in and public recognition of the ABA Marks as part of its Hardwood Classics business line of products and/or services associated to promote its classic, retro trademarks. The relevant consuming public has come to readily identify and associate the ABA Marks with NBAP and/or products emanating exclusively from, or endorsed or approved by, NBAP. Answer. Denied. In further defense, the Hardwood Classics business line does not extensively use, promote, or even recognize a category of ABA Marks goods https://store.nba.com/hardwood-classics/c-48147129+z-9352503-894010671. Any offerings or sales of ABA Marks goods by NBAP or alleged general use of ABA Marks 3 4112133_1 outside the United States cannot create trademark rights in support of this opposition. 4. To protect its valuable name and brand, NBAP has applied to register and/or obtained federal registrations for the ABA Marks identified in the chart below, including, in particular, registrations for the logos depicted below containing the literal elements ABA MEMPHIS PROS (U.S. Reg. No. 2,121,875) and ABA (U.S. Reg. No. 2,717,915) (together, the “Registrations”), each of which is valid, subsisting, unrevoked, and uncancelled, and applications for the word marks ABA (Serial No. 90/034,002) and AMERICAN BASKETBALL ASSOCIATION (Serial No. 90/034,011). 1 Goods and Services; First Use Mark Reg. or App. No./Date Date Reg. No. 2,121,875 Class 25: 12/16/1997 Clothing, namely, hosiery, footwear, T-shirts, sweat shirts, sweatpants, pants, tank tops, jerseys, shorts, pajamas, sport shirts, rugby shirts, sweaters, belts, ties, nightshirts, hats, warm-up suits, jackets, parkas, coats, cloth bibs, head bands and wrist bands (first use in commerce, 11/19/1996). Reg. No. 2,717,915 Class 25: Clothing namely 02/20/2003 hosiery, footwear, T-shirts, sweatshirts, sweatpants, pants, tank tops, jerseys, shorts, pajamas, sport shirts, rugby shirts, sweaters, belts, ties, nightshirts, hats, toques, warm-up suits, jackets, parkas, coats, cloth bibs, head bands, wrist bands, aprons, sports bras, boxer shorts, slacks, caps, ear muffs, gloves, 4 4112133_1 mittens, woven and knit shirts (first use in commerce, 12/15/1995). ABA Serial No. 90/034,002 Class 25: Clothing, namely, T- 07/02/2020 shirts, shirts, sweatshirts, tank tops, jerseys, shorts, hats, caps being headwear, jackets (first use in commerce, 12/15/1995). AMERICAN Serial No. 90/034,011 Class 25: Clothing, namely, T- BASKETBALL 07/02/2020 shirts, ASSOCIATION shirts, sweatshirts, tank tops, jerseys, shorts, hats, caps being headwear, jackets. Footnote 1 Attached hereto as Exhibits 1-4 are true and correct copies of the foregoing registrations and applications, with records of their current status and title obtained from the United States Patent and Trademark Office’s (“USPTO”) Trademark Status & Document Retrieval (“TSDR”) database. Answer: It is denied that the Registrations are valid. See Applicant’s amended counterclaim. TBMP § 313.04 (2020). It is affirmatively alleged that “ABA” components of the Registrations cannot be dissected from the marks and that only the marks as a whole can be compared to Applicant’s Marks. Reg. No. 2,717,915 was prosecuted by NBAP as a design entitled “VIRGINIA SQUIRES AND DESIGN,” and registered as a design without words. NBAP obtained from a third party the word mark VIRGINIA SQUIRES, Reg. No. 1,985,9909. NBAP registered the same design depicted in Reg. No. 2,717,915 plus the words VIRGINIA SQUIRES, Reg. No. 5 4112133_1 2,192,440. Further in amplification of the denial, the pled word mark applications were refused registration in non-final Office Actions shortly before Opposer filed the complaint and Exhibits 1—4 are not complete records of the status of the Registrations and applications. 5. Further evidencing NBAP’s strong and longstanding rights in the ABA Marks, NBAP also obtained federal registrations for the ABA Marks identified in the chart below, which are no longer active registrations but subsisted on the Principal Register for at least ten years and, with one exception, achieved incontestable status.2 Footnote 2 Attached hereto as Exhibits 5-9 are true and correct copies of the foregoing registrations, with records of their current status and title obtained from the USPTO’s TSDR database. Reg. Cancellat Mark No./Dat Goods and Services; First Use Date ion e No. 10/11/2020 Class 25: Clothing, namely, hosiery, 2,246,2 footwear, T-shirts, sweat shirts, 75 sweatpants, pants, tank tops, 05/18/1 jerseys, shorts, pajamas, sport shirts, rugby 999 shirts,sweaters, belts, ties, nightshirts, hats, warm-up suits, jackets, parkas, coats, cloth bibs, head bands and wrist bands (first use in commerce, 03/1998). Class 28: Toys, games and sporting 6 4112133_1 No. goods, namely, basketballs, golf balls, 2,951,9 playground balls, sports balls, rubber 12/18/05 00 action balls and foam action balls, 05/17/2 basketball nets, basketball backboards, 005 pumps for inflating basketballs, and needles therefor, golf clubs, golf bags, electronic basketball table top games, basketball table top games, basketball board games, electronic video arcade game machines, stand alone video game machines, basketball kit comprised of a basketball net and whistle, dolls, stuffed toys, jigsaw puzzles and Christmas tree ornaments (first use in commerce, 03/31/2004). AMERICA No. 05/02/2014 Class 25: Clothing, namely, hosiery, N 2,769,4 footwear, t-shirts, sweatshirts, sweatpants, BASKETBA 04 pants, tank tops, jerseys, shorts, pajamas, LL 09/30/2 sport shirts, rugby shirts, sweaters, belts, ASSOCIATI 003 ties, nightshirts, hats, warm- ON up suits, jackets, parkas, coats, cloth bibs, head bands, wrist bands, aprons, boxer shorts, slacks, caps, ear muffs and gloves (first use in commerce, 03/1998).

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