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Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA272541 Filing date: 03/17/2009 IN THE PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD Proceeding 91183558 Party Plaintiff Temple University -- Of the Commonwealth System of Higher Education Correspondence Leslie H Smith Address Liacouras & Smith, LLP 1515 Market Street, Suite 808 Philadelphia, PA 19102 UNITED STATES [email protected] Submission Motion for Summary Judgment Filer's Name Leslie H Smith Filer's e-mail [email protected] Signature /Leslie H Smith/ Date 03/17/2009 Attachments TEMPLE WORKOUT GEAR SJ Motion with Exhibits and Certif of Service.pdf ( 75 pages )(1933802 bytes ) IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

In the Matter of Application No. 77/038246 Published in the Official Gazette on December 18, 2007

Temple University – Of The Commonwealth: System of Higher Education, : : Opposer, : Opposition No. 91183558 : v. : : BCW Prints, Inc., : : Applicant. :

SUMMARY JUDGMENT MOTION OF OPPOSER TEMPLE UNIVERSITY – OF THE COMMONWEALTH SYSTEM OF HIGHER EDUCATION

TABLE OF CONTENTS

Page

I. INTRODUCTION…………………………………………………………… 2

II. UNDISPUTED FACTS……………………………………………………… 3

III. THE UNDISPUTED FACTS ESTABLISH A LIKELIHOOD OF CONFUSION BETWEEN THE TEMPLE MARKS AND OPPOSER’S TEMPLE WORKOUT GEAR (AND DESIGN) TRADEMARK…………… 7

A. Likelihood of Confusion is a Question of Law Appropriate for Summary Judgment………………………………………………………………….. 7

B. Under the du Pont Test, the Undisputed Facts Establish A Likelihood of Confusion between Temple’s TEMPLE Marks and Opposer’s TEMPLE WORKOUT GEAR (and design) Mark…………………………………… 7

1. The TEMPLE Marks and the TEMPLE WORKOUT GEAR (and design) Mark Are Similar in Appearance, Sound, Connotation, and Commercial Impression………………………… 8

2. The Respective Goods Are Identical or Sufficiently Related Such that Confusion is Likely…………………………….. 11

3. The Respective Goods Are Marketed to the Same Customers in the Same Channels……………………………………………… 12

4. The Degree of Care Exercised by Consumers Supports a Likelihood of Confusion Finding...... 12

5. The TEMPLE Marks Are Strong Marks…………………………… 13

6. The TEMPLE Marks Are Used on a Variety of Goods and Services………………………………………………………… 14

IV. BECAUSE THE TEMPLE WORKOUT GEAR (AND DESIGN) MARK WAS NOT USED IN CONNECTION WITH SPORTS AS OF THE FIRST USE DATE LISTED IN THE APPLICATION, THE APPLICATION IS VOID AB INITIO…………………………………………………………………………. 15

V. CONCLUSION………………………………………………………………… 16

EXHIBITS

EXHIBIT A -- DECLARATION OF LINDA T. FRAZER

EXHIBIT B -- APPLICANT’S ANSWERS TO OPPOSER’S SECOND SET OF INTERROGATORIES EXHIBIT C -- DOCUMENT BATES-NUMBERED 000044 EXHIBIT D -- TARR PRINTOUTS OF SAMPLING OF 3RD PARTY REGISTRATIONS FOR BOTH SWEAT /PANTS AND SPORTS BRAS

EXHIBIT E -- APPLICANT’S ANSWERS TO OPPOSER’S INTERROGATORIES NOS. 21 AND 22

EXHIBIT F -- DECLARATION OF LESLIE H. SMITH

ATTACHMENT 1: WIKIPEDIA DEFINITION OF “SPORTS ”

TABLE OF AUTHORITIES

Page

Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000)………… 10

In re Dixie Restaurants, 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997)…………………. 10

In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973)…… passim

Federated Foods, Inc. v. Fort Howard Paper Co., Inc., 192 USPQ 24 (CCPA 1976)……….. 15

Giant Foods, Inc. v. Nation’s Foodservice, Inc., 218 USPQ 390 (Fed. Cir. 1993)……… 10, 11

Hurley Int’l, LLC v. Volta, 82 USPQ2d 1339 (TTAB 2007)………………………………….. 16

In re Hyper Shoppes (Ohio), Inc., 6 USPQ2d 1025 (Fed. Cir. 1988)………………………….. 10

J& J Snack Foods Corp. v. McDonald’s Corp., 18 USPQ2d 1889 (Fed. Cir. 1991)……. …… 15

Kabushiki Kaisha Hattori Seiko v. Satellite Int’l Ltd., 29 USPQ2d 1317 (TTAB 1991)………. 15

Kellogg Co. v. Pack’Em Enterprises, Inc., 14 USPQ2d 1545 (TTAB 1990)…………………. 7, 8

Kenner Parker Toys, Inc. v. Rose Art Indust. Inc., 22 USPQ2d 1453 (Fed. Cir. 1992)……….... 7

Morton-Norwich Prods., Inc. v. S.C. Johnson & Son, Inc., 531 F.2d 561 (CCPA 1976)……… 11

In re National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985)………………… 10

Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1777, 73 USPQ2d 1689 (Fed. Cir. 2005)…………………………………………………………… 11

Recot, Inc. v. M.C. Becton, 214 F.3d 1322 (Fed. Cir. 2000)……………………………… 12, 13

Saab-Scania Akiebolag v. Sparkomatic Corp., 26 USPQ 1709 (TTAB 1993)………………… 12

Sweats , Inc. v. Pannill Knitting Co., 4 USPQ2d 1793 (Fed. Cir. 1987)……………… 7

Turner Entertainment Co. v. Nelson, 38 USPQ2d 1942 (TTAB 1996)…………………………. 7

TABLE OF CONTENTS

Page

I. INTRODUCTION…………………………………………………………… 2

II. UNDISPUTED FACTS……………………………………………………… 3

III. THE UNDISPUTED FACTS ESTABLISH A LIKELIHOOD OF CONFUSION BETWEEN THE TEMPLE MARKS AND OPPOSER’S TEMPLE WORKOUT GEAR (AND DESIGN) TRADEMARK…………… 7

A. Likelihood of Confusion is a Question of Law Appropriate for Summary Judgment………………………………………………………………….. 7

B. Under the du Pont Test, the Undisputed Facts Establish A Likelihood of Confusion between Temple’s TEMPLE Marks and Opposer’s TEMPLE WORKOUT GEAR (and design) Mark…………………………………… 7

1. The TEMPLE Marks and the TEMPLE WORKOUT GEAR (and design) Mark Are Similar in Appearance, Sound, Connotation, and Commercial Impression………………………… 8

2. The Respective Goods Are Identical or Sufficiently Related Such that Confusion is Likely…………………………….. 11

3. The Respective Goods Are Marketed to the Same Customers in the Same Channels……………………………………………… 12

4. The Degree of Care Exercised by Consumers Supports a Likelihood of Confusion Finding...... 12

5. The TEMPLE Marks Are Strong Marks…………………………… 13

6. The TEMPLE Marks Are Used on a Variety of Goods and Services………………………………………………………… 14

IV. BECAUSE THE TEMPLE WORKOUT GEAR (AND DESIGN) MARK WAS NOT USED IN CONNECTION WITH SPORTS BRAS AS OF THE FIRST USE DATE LISTED IN THE APPLICATION, THE APPLICATION IS VOID AB INITIO…………………………………………………………………………. 15

V. CONCLUSION………………………………………………………………… 16

EXHIBITS

EXHIBIT A -- DECLARATION OF LINDA T. FRAZER

EXHIBIT B -- APPLICANT’S ANSWERS TO OPPOSER’S SECOND SET OF INTERROGATORIES EXHIBIT C -- DOCUMENT BATES-NUMBERED 000044 EXHIBIT D -- TARR PRINTOUTS OF SAMPLING OF 3RD PARTY REGISTRATIONS FOR BOTH SWEAT SHIRTS/PANTS AND SPORTS BRAS

EXHIBIT E -- APPLICANT’S ANSWERS TO OPPOSER’S INTERROGATORIES NOS. 21 AND 22

EXHIBIT F -- DECLARATION OF LESLIE H. SMITH

ATTACHMENT 1: WIKIPEDIA DEFINITION OF “”

ATTACHMENT 2: SEARCH RESULTS FOR “SPORTS BRA” ON APPLICANT’S WEB SITE LOCATED AT WWW.TEMPLEWORKOUTGEAR.COM

ATTACHMENT 3: SEARCH RESULTS FOR “TANK ” ON APPLICANT’S WEB SITE LOCATED AT WWW.TEMPLEWORKOUTGEAR.COM

TABLE OF AUTHORITIES

Page

Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000)………… 10

In re Dixie Restaurants, 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997)…………………. 10

In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973)…… passim

Federated Foods, Inc. v. Fort Howard Paper Co., Inc., 192 USPQ 24 (CCPA 1976)……….. 15

Giant Foods, Inc. v. Nation’s Foodservice, Inc., 218 USPQ 390 (Fed. Cir. 1993)……… 10, 11

Hurley Int’l, LLC v. Volta, 82 USPQ2d 1339 (TTAB 2007)………………………………….. 16

In re Hyper Shoppes (Ohio), Inc., 6 USPQ2d 1025 (Fed. Cir. 1988)………………………….. 10

J& J Snack Foods Corp. v. McDonald’s Corp., 18 USPQ2d 1889 (Fed. Cir. 1991)……. …… 15

Kabushiki Kaisha Hattori Seiko v. Satellite Int’l Ltd., 29 USPQ2d 1317 (TTAB 1991)………. 15

Kellogg Co. v. Pack’Em Enterprises, Inc., 14 USPQ2d 1545 (TTAB 1990)…………………. 7, 8

Kenner Parker Toys, Inc. v. Rose Art Indust. Inc., 22 USPQ2d 1453 (Fed. Cir. 1992)……….... 7

Morton-Norwich Prods., Inc. v. S.C. Johnson & Son, Inc., 531 F.2d 561 (CCPA 1976)……… 11

In re National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985)………………… 10

Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1777, 73 USPQ2d 1689 (Fed. Cir. 2005)…………………………………………………………… 11

Recot, Inc. v. M.C. Becton, 214 F.3d 1322 (Fed. Cir. 2000)……………………………… 12, 13

Saab-Scania Akiebolag v. Sparkomatic Corp., 26 USPQ 1709 (TTAB 1993)………………… 12

Sweats Fashions, Inc. v. Pannill Knitting Co., 4 USPQ2d 1793 (Fed. Cir. 1987)……………… 7

Turner Entertainment Co. v. Nelson, 38 USPQ2d 1942 (TTAB 1996)…………………………. 7

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

In the Matter of Application No. 77/038246 Published in the Official Gazette on December 18, 2007

Temple University – Of The Commonwealth: System of Higher Education, : : Opposer, : Opposition No. 91183558 : v. : : BCW Prints, Inc., : : Applicant. :

SUMMARY JUDGMENT MOTION OF OPPOSER TEMPLE UNIVERSITY – OF THE COMMONWEALTH SYSTEM OF HIGHER EDUCATION

Opposer Temple University – Of The Commonwealth System of Higher Education

(“Temple”), by and through its undersigned counsel, hereby files this motion for summary judgment, requesting the Board to dismiss Applicant’s TEMPLE WORKOUT GEAR (and design) application, Serial No. 77/038246 (the “Application”), under Section 2(d) of the

Trademark Act, as likely to be confused with Temple’s TEMPLE trademarks and service marks, and further on the ground that, because Applicant was not using the mark in connection with sports bras as of the date indicated in the Application, the Application contains a material misstatement of fact that Applicant knew or should have known was false or misleading, making the Application void ab initio.1

1 The Notice of Opposition contained only a likelihood of confusion claim. Based on information acquired during discovery, Opposer, on March 11, 2009, filed a Motion for Leave to Amend the Notice of Opposition, seeking to include a claim that the Application contains this material misstatement of fact that Applicant knew or should have known was false or misleading. The arguments concerning this fraud claim are included in this brief, to avoid the need for resubmission of this Summary Judgment Motion, should the Motion for Leave to Amend be granted. If the Motion for Leave to Amend is denied, this second basis for summary judgment (specifically, Section IV of this Summary Judgment Motion) should be disregarded.

I. INTRODUCTION

Founded in 1884, Temple is a Philadelphia-based university, with multiple campuses abroad. Temple is the 28th largest university in the United States, and the 5th largest provider of professional education in the United States. Temple owns a number of trademarks and service marks, both registered and unregistered, containing the term TEMPLE (collectively, the

“TEMPLE Marks”), including, among others, TEMPLE, TEMPLE UNIVERSITY, and

TEMPLE UNIVERSITY (stylized), TEMPLE UNIVERSITY--OF THE COMMONWEALTH

SYSTEM OF HIGHER EDUCATION (and design), and TEMPLE OWLS.

Temple, like most U.S. universities, uses its trademarks in connection with a range of apparel, including, among other things, shirts, sweatshirts, sweat pants, , , and , and has been using its trademarks in connection with apparel starting in 1966, with its use in commerce of its TEMPLE UNIVERSITY mark in connection with warm-up , , night shirts, , and t-shirts.

On November 7, 2006, Applicant BCW Prints, Inc. (“Applicant”) applied to register the following trademark on the USPTO’s Principal Register:

based on its claimed use of the mark in commerce starting at least as early as October 31, 2006, in connection with “shirts, sports bras, pants, sweat pants, sweatshirts, jackets, shorts, and hats,” in International Class 25 (the “Application”).

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For the reasons set forth herein, including, in particular, the fact that the dominant portion of Applicant’s mark consists of the term TEMPLE, and the fact that the goods in connection with which Applicant seeks to register its mark either directly overlap or are closely related to the goods in connection with which Temple’s TEMPLE Marks are used, Temple submits that there is a likelihood of confusion between its TEMPLE Marks and Applicant’s ma r k , and therefore, that summary judgment should be awarded in favor of Temple.

II. UNDISPUTED FACTS

The following facts are not in dispute:

1. Temple uses one or more of its TEMPLE Marks in connection with a wide variety of clothing and other items, and has been doing so continuously since at least as early as

1966, when it first used the TEMPLE UNIVERSITY trademark in commerce in connection with warm-up suits, sweaters, night shirts, robes, and t-shirts. See Declaration of Linda T. Frazer, ¶¶

7 and 13, attached hereto as Exhibit A.

2. Temple is the owner of a number of trademarks and service marks containing, or consisting wholly of, the term TEMPLE and, where applicable, the federal registrations therefore, including, among others:

a. TEMPLE, Reg. No. 1562686 (Int’l Class 41), for use in connection with “educational services, namely providing instruction and training at the undergraduate, graduate, postgraduate, and professional levels; entertainment services, namely, organizing and conducting athletic competitions;”

b. TEMPLE, for use in connection with clothing apparel, including sweatshirts, sweat pants, t-shirts, jackets, and hats;

c. TEMPLE UNIVERSITY, Reg. No. 1538142 (Int’l Classes 16, 18, 21, 25 and 41), for use in connection with, among other things, “warm-up suits, sweaters, night shirts, robes and t-shirts,” and “educational

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services and entertainment services, namely organizing and sponsoring college sporting events;”

d. TEMPLE UNIVERSITY OF THE COMMONWEALTH SYSTEM OF HIGHER EDUCATION (and design), Reg. No. 1607515 (Int’l Class 25), for use in connection with “sweatshirts and t-shirts;”

e. TEMPLE UNIVERSITY OF THE COMMONWEALTH SYSTEM OF HIGHER EDUCATION (and design), Reg. No. 1608527 (Int’l Class 41), for use in connection with “educational services, namely, providing instruction and training at the undergraduate and doctoral levels;”

f. TEMPLE OWLS, Reg. No. 2281814 (Int’l Classes 6, 16, 18, 20, 21, 25, 28, and 41), for use in connection with, among other things, “ and t-shirts” and “entertainment services in the nature of presentation of a variety of intercollegiate sporting events, namely, football, basketball, baseball, ice hockey, soccer, swimming, tennis, crew, gymnastics, fencing, lacrosse, softball, squash, wrestling and track and field events.”

g. TEMPLE OWLS (and design), Reg. 2283414 (Int’l Classes 16, 18, 20, 21, 25, 28, and 41), for use in connection with, among other things, “caps and t-shirts” and “entertainment services in the nature of presentation of a variety of intercollegiate sporting events, namely, football, basketball, baseball, ice hockey, soccer, swimming, tennis, crew, gymnastics, fencing, lacrosse, softball, squash, wrestling and track and field events;”

h. TEMPLE UNIVERSITY (stylized), Reg. No. 3234742 (Int’l Classes 16, 25, and 41), for use in connection with, among other things, “educational services, namely, providing instruction and training at the undergraduate, graduate, postgraduate, and professional levels; entertainment services, namely, arranging and conducting athletic competitions,” in Int’l Class 41, and “t-shirts, knit caps, sweat shirts, sweat pants, seat , seat suits, sweaters, shorts, , hats, baseball caps, jackets, , vests, sleepwear, , and swim wear,” in Int’l Class 25.

See USPTO files for the above-referenced registrations, copies of the TARR printouts for which are attached to the Notice of Opposition.

3. Temple started using each of its TEMPLE Marks in commerce prior to

Applicant’s claimed first use date of October 31, 2007. Specifically, Temple’s use of its

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TEMPLE mark in commerce in connection with educational services commenced at least as early as 1889, and in connection with clothing apparel started at least as early as 1991. See

Declaration of Linda T. Frazer, ¶¶ 11-12, attached hereto as Exhibit A. Temple’s use of its

TEMPLE UNIVERSITY mark in commerce in connection with its educational services started at least as early as 1908, and its use of the TEMPLE UNIVERSITY mark in commerce in connection with clothing apparel started at least as early as 1966. See Declaration of Linda T.

Frazer, ¶ 13, attached hereto as Exhibit A. Temple’s use of its TEMPLE UNIVERSITY— OF

THE COMMONWEALTH SYSTEM OF HIGHER EDUCATION (and design) mark in commerce in connection with sweat shirts and t-shirts started at least as early as 1967, and its use of the TEMPLE UNIVERSITY – OF THE COMMONWEALTH SYSTEM OF HIGHER

EDUCATION (and design) mark in commerce in connection with its educational services started at least as early as 1965. See Declaration of Linda T. Frazer, ¶14, attached hereto as Exhibit A.

Temple’s use of its TEMPLE OWLS and TEMPLE OWLS (and design) trademarks in commerce in connection with caps and t-shirts started at least as early as May 1997. See

Declaration of Linda T. Frazer, ¶15, attached hereto as Exhibit A. Temple’s use in commerce of its TEMPLE UNIVERSITY (stylized) mark in connection with its educational and entertainment services started at least as early as March 1, 2005, and, in connection with its apparel items, at least as early as March 14, 2006, with a constructive priority date of March 31, 2005, the date on which Temple’s TEMPLE UNIVERSITY (stylized) application was filed with the U.S. Patent and Trademark Office. See Declaration of Linda T. Frazer, ¶16, attached hereto as Exhibit A, and USPTO file for the TEMPLE UNIVERSITY (stylized) registration, a copy of the TARR printout for which is attached to the Notice of Opposition.

4. Temple’s use of the TEMPLE Marks has been valid and continuous since

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the respective commencements of such use. See Declaration of Linda T. Frazer, ¶17, attached hereto as Exhibit A.

5. Temple has acquired valuable goodwill in the Temple Marks through years of extensive use and promotion. See Declaration of Linda T. Frazer, ¶¶ 7-17 attached hereto as Exhibit A.

6. On November 7, 2006, Applicant filed the Application, based on its use of

the mark in commerce, in connection with “clothing, namely, shirts, sports bras, pants, sweat pants, sweat shirts, jackets, shorts and hats” in International Class 25. See

Application.

7. Applicant disclaimed the descriptive terms WORKOUT GEAR apart from the mark as shown. See Application.

8. Because Temple’s date of first use for each of its TEMPLE Trademarks precedes Applicant’s claimed first use date of October 31, 2006, Temple has priority of use.

9. To support its claimed first use date for the TEMPLE WORKOUTGEAR

(and design) mark in connection with “sports bras,” Applicant supplied only an invoice on which the items fitness pants, t-, shelf-bra tank top, and shorts -- but not sports bras -- appear. See

Applicant’s Response to Opposer’s Second Set of Interrogatories, attached hereto as Exhibit B, and referenced invoice (Document Bates No. 000044), attached hereto as Exhibit C.

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10. Applicant has provided no documentation evidencing its claimed first use of TEMPLE WORKOUT GEAR (and design) mark in connection with sports bras, as set forth in the Application. See Applicant’s Response to Opposer’s Second Set of Interrogatories, attached hereto as Exhibit B, and referenced invoice (Document Bates No. 000044), attached hereto as

Exhibit C.

III. THE UNDISPUTED FACTS ESTABLISH A LIKELIHOOD OF CONFUSION BETWEEN THE TEMPLE MARKS AND OPPOSER’S TEMPLE WORKOUT GEAR (AND DESIGN) TRADEMARK

A. Likelihood of Confusion is a Question of Law Appropriate for Summary Judgment.

Whether Applicant’s TEMPLE WORKOUT GEAR (and design) mark is likely to cause confusion with Temple’s TEMPLE Marks is a question of law suitable for summary judgment. See Turner Entertainment Co. v. Nelson, 38 USPQ2d 1942, 1944 (TTAB 1996);

Kenner Parker Toys, Inc. v. Rose Art Indust. Inc., 22 USPQ2d 1453, 1455 (Fed. Cir. 1992);

Sweats Fashions, Inc. v. Pannill Knitting Co., 4 USPQ2d 1793 (Fed. Cir. 1987); Kellogg Co. v.

Pack’Em Enterprises, Inc., 14 USPQ2d 1545, 1550 (TTAB 1990).

B. Under the du Pont Test, the Undisputed Facts Establish A Likelihood of Confusion between Temple’s TEMPLE Trademarks and Opposer’s TEMPLE WORKOUT GEAR (and design) Mark.

Under the controlling du Pont test, the following factors should be considered here to determine whether there is a likelihood of confusion between the TEMPLE Marks as used in connection with Temple’s educational services and clothing apparel and TEMPLE

WORKOUT GEAR (and design), as used in connection with identical or closely related items of apparel:

(1) The similarity of the marks;

(2) The similarity of the goods and services involved;

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(3) The similarity of the marketing channels of the goods and services;

(4) The degree of care likely to be exercised by purchasers;

(5) The fame of the prior mark; and

(6) The variety of goods and service in connection with which the senior mark is used.

In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (CCPA 1973).

Analyzing these du Pont factors in light of the undisputed facts here compels a finding that

Applicant’s TEMPLE WORKOUT GEAR (and design) mark is confusingly similar to the

TEMPLE Marks.

1. The TEMPLE Marks and the TEMPLE WORKOUT GEAR (and design) Mark Are Similar in Appearance, Sound, Connotation, and Commercial Impression.

A comparison of the ma r k s at issue establishes that the TEMPLE Marks and Applicant’s mark are similar in appearance, sound, connotation, and commercial impression. For example, compare the following:

TEMPLE vs.

8

TEMPLE vs.

TEMPLE UNIVERSITY vs.

vs.

Save for the descriptive terms WORKOUT GEAR and UNIVERSITY, which were expressly disclaimed apart from the marks as shown, the word portion of these marks is identical. Although marks must be considered in their entireties, descriptive matter often is

9

given less weight than other elements of the marks. See In re National Data Corp., 753 F.2d

1056, 224 USPQ 749 (Fed. Cir. 1985) (finding it proper to give more weight to a dominant feature of a mark when determining the commercial impression created by the mark) and

Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000), quoting In re National Data Corp., 753 F.2d 1056, 224 USPQ at 752 (‘descriptive component of a mark may be given little weight in reaching a conclusion on the likelihood of confusion’).

Not only is the disclaimed wording WORKOUT GEAR in Applicant’s mark descriptive, thus making TEMPLE the dominant and principal source-indicative element of the mark, but the disclaimed terms also appear in markedly smaller font beneath the significantly larger-fonted word TEMPLE, with the overall effect being that the word TEMPLE dominates

Applicant’s mark. See In re National Data Corp., 753 F.2d 1056, 224 USPQ at 751 (“nothing improper in stating that, for rational reasons, more or less weight has been given to a particular feature of a mark, provided the ultimate conclusion rests on a consideration of the marks in their entireties”).

Applicant’s inclusion of a design with its mark does not eliminate the likelihood of confusion between Applicant’s mark and Temple’s TEMPLE marks, because the term

TEMPLE remains the dominant feature of the respective marks. See, e.g., In re Dixie

Restaurants, 105 F.3d 1405, 1406, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997) (DELTA for hotel, motel, and restaurant services likely to be confused with THE DELTA CAFÉ (and design) for restaurant services, finding that Applicant’s use of a design and the descriptive terms THE and

CAFÉ did not remove the likelihood of confusion). See also In re Hyper Shoppes (Ohio), Inc., 6

USPQ2d 1025, 1026 (Fed. Cir. 1988) (BIGG’S (and design) grocery and general store services likely to be confused with BIGGS (and design) furniture store services); Giant Foods, Inc. v.

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Nation’s Foodservice, Inc., 218 USPQ 390, 395 (Fed. Cir. 1993) (GIANT HAMBURGERS (and design) likely to cause confusion with GIANT (and design) and GIANT FOODS (and design) markets).

This factor, therefore, supports a finding of a likelihood of confusion.

2. The Respective Goods Are Identical or Sufficiently Related Such that Confusion is Likely.

While it is not necessary for the parties’ respective goods to be identical to support a finding of likelihood of confusion, all of the goods at issue here, save one (i.e., sports bras), are identical. Specifically, Applicant recites the following goods in its application:

“Clothing, namely, shirts, sports bras, pants, sweat pants, sweat shirts, jackets, shorts, and hats.”

See Application. Of these items, Temple uses, and, for years prior to Applicant’s claimed date of first use, has been using, one or more of the TEMPLE Marks in connection with shirts, pants/sweat pants, sweat shirts, jackets, shorts, and hats. See Linda Frazer Declaration, ¶¶ 7, 11-

16. The only item that is not identical, namely, sports bras, is sufficiently related to the items of fitness apparel, such as sweat shirts and sweat pants, in connection with which Temple uses one or more of its TEMPLE marks. See copies of TARR printouts for a sampling of marks registered for use in connection with sweat pants/shirts and sports bras, attached hereto as Exhibit D.

Because the goods identified in Applicant’s application either are identical or are sufficiently related to the goods in connection with which the TEMPLE Marks are used, this factor supports a finding of likelihood of confusion. See, e.g., Palm Bay Imports, Inc. v. Veuve

Clicquot Ponsardin Maison Fondee En 1777, 73 USPQ2d 1689 (Fed. Cir. 2005) (VEUVE

ROYALE for sparkling wine confusingly similar to VEUVE CLICQUOT for champagne);

Morton-Norwich Prods., Inc. v. S.C. Johnson & Son, Inc., 531 F.2d 561, 562 (CCPA 1976)

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(RAINFRESH for liquid detergent confusingly similar to RAIN BARREL for fabric softener given close relationship of the goods and similarity of commercial impressions).

3. The Respective Goods Are Marketed to the Same Customers in the Same Channels.

Temple’s TEMPLE apparel is marketed to the general public, and the apparel is sold in a variety of channels, including over the internet, via catalog, in campus bookstores, and in retail stores. See Affidavit of Linda T. Frazer, ¶ 9, attached hereto as Exhibit A. Likewise,

Applicant’s apparel is marketed to the general public, through the internet, its catalog, and the distribution of postcards. See Applicant’s Answers to Opposer’s Interrogatories Nos. 21 and 22, attached hereto as Exhibit E.

Applicant’s Application contains no limitation with respect to trade channels, nor do Opposer’s registrations contain any limitations with respect to trade channels. The parties’ respective goods and services, therefore, are presumed to move “through all the ordinary and usual channels of trade for such goods to all the usual customers for these products.” Saab-

Scania Akiebolag v. Sparkomatic Corp., 26 USPQ 1709, 1711 (TTAB 1993). Applicant thus cannot rely on any limitations in its or Temple’s current trade channels and/or customers to avoid the likelihood of confusion between Applicant’s mark and the TEMPLE Marks.

4. The Degree of Care Exercised by Consumers Supports a Likelihood of Confusion Finding.

In addition to the fact that Temple’s TEMPLE apparel and Applicant’s TEMPLE

WORKOUT GEAR (and design) apparel are each marketed to the general public (see infra

Section III(B)(3)), the respective apparel consists of commonly worn and purchased items – t- shirts, sweatshirts, sweat pants, shorts, hats – so there’s no reason to believe that consumers of the parties’ respective apparel will be particularly discerning. See, e.g., Recot, Inc. v. M.C.

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Becton, 214 F.3d 1322, 1329 (Fed. Cir. 2000) (large pool of consumers, including both sophisticated and unsophisticated purchasers makes confusion among consumers likely, and low- priced products also increase the risk of likelihood of confusion).

Thus, this factor also weighs in favor of a finding of likelihood of confusion.

5. The TEMPLE Marks Are Strong Marks.

Founded in 1884, Temple University is now in its 125th year of providing its educational services. As the 28th largest university in the United States and the 5th largest provider of professional education, with a current enrollment of more than 34,000 students (undergraduate and graduate combined), Temple has a national reputation, and draws students throughout the

United States and abroad. Temple also regularly promotes its services in nationwide campaigns.

See Declaration of Linda T. Frazer, ¶¶ 2-4, attached hereto as Exhibit A.

Temple’s history of using one or more of its TEMPLE Marks in connection with clothing apparel dates back to 1966, when the TEMPLE UNIVERSITY mark that is the subject of Reg.

No. 1538142 was first used in commerce in connection with warm-up suits, sweaters, night shirts, robes, and t-shirts at least as early as 1966. See Declaration of Linda T. Frazer, ¶ 13, attached hereto as Exhibit A. The TEMPLE trademark was first used in commerce in connection with sweat shirts and t-shirts at least as early as 1991. See Declaration of Linda T. Frazer, ¶ 12, attached hereto as Exhibit A.

The TEMPLE UNIVERSITY OF THE COMMONWEALTH SYSTEM OF HIGHER

EDUCATION (and design) mark, which is the subject of Reg. No. 1607515, was first used in commerce in connection with “sweatshirts and t-shirts,” at least as early as 1967. See

Declaration of Linda T. Frazer, ¶ 14, attached hereto as Exhibit A. The TEMPLE OWLS mark, which is the subject of Reg. No. 2281814, and the TEMPLE OWLS (and design) ma r k , which is

13

the subject of Reg. 2283414, were first used in commerce in connection with “caps and t-shirts,” at least as early as May 1997. See Declaration of Linda T. Frazer, ¶ 15, attached hereto as

Exhibit A. Most recently, the TEMPLE UNIVERSITY (stylized) ma r k , which is the subject of

Reg. No. 3234742, was first used in commerce in connection with “t-shirts, knit caps, sweat shirts, sweat pants, sweat bands, sweat suits, sweaters, shorts, boxer shorts, hats, baseball caps, jackets, neckties, vests, sleepwear, socks, and swim wear,” was first used in commerce at least as early as March 14, 2006, see Declaration of Linda T. Frazer, ¶ 16, attached hereto as Exhibit A, and this mark, by virtue of it being the subject of an intent-to-use application that matured into an application, has a constructive priority date of March 31, 2005, the date on which the application was filed.

The sale of apparel in connection with which one or more of the Temple Marks is used generates significant revenues. Revenues for sales of apparel in Temple’s bookstores alone have, for at least the past five years, totaled more than $6,900,000.00 per year, with apparel used in connection with one or more of the Temple Marks constituting approximately 90% of all such apparel sold in the bookstores. See Declaration of Linda T. Frazer, ¶ 10, attached hereto as

Exhibit A.

Accordingly, this factor also weighs in favor of a finding of a likelihood of confusion.

6. The TEMPLE Marks Are Used on a Variety of Goods and Services.

Temple uses its TEMPLE Marks not only in connection with its educational services and its clothing apparel, but also in connection with an extensive range of college sporting events, certain of which receive national coverage on the major television networks, ESPN, and other national and regional sports stations, and with a variety of other goods and services, including notebooks, calendars, cups, mugs, key chains, backpacks, and . See Declaration of

14

Linda T. Frazer, ¶ 8, attached hereto as Exhibit A. This factor, therefore, also weighs in favor of a finding of a likelihood of confusion.

Accordingly, the relevant du Pont factors -- most particularly, the key factors of the degree of similarity of the parties’ marks and degree of similarity of their respective goods -- support a finding here of a likelihood of confusion. See Federated Foods, Inc. v. Fort Howard

Paper Co., Inc., 192 USPQ 24 (CCPA 1976) (“in any likelihood of confusion analysis, two key factors are the similarities between the marks and the similarities between the goods and services”). Any doubt regarding the likelihood of confusion issue must be resolved in favor of

Temple, the senior user, and against the newcomer, Applicant. See Kabushiki Kaisha Hattori

Seiko v. Satellite Int’l Ltd., 29 USPQ2d 1317 (TTAB 1991); J& J Snack Foods Corp. v.

McDonald’s Corp., 18 USPQ2d 1889, 1892 (Fed. Cir. 1991).

IV. BECAUSE THE TEMPLE WORKOUT GEAR (AND DESIGN) MARK WAS NOT USED IN CONNECTION WITH SPORTS BRAS AS OF THE FIRST USE DATE LISTED IN THE APPLICATION, THE APPLICATION IS VOID AB INITIO.

The goods recited in the Application specifically include “sport bras.” See

Application. However, as its sole documentary support for its claimed date of first use of the

TEMPLE WORKOUT GEAR (and design) mark in connection with “sports bras,” Applicant produced an invoice listing only fitness pants, a t-shirt, a shelf-bra tank top, and a pair of shorts.

See Applicant’s Response to Opposer’s Second Set of Interrogatories, attached hereto as Exhibit

B, and referenced invoice (Document Bates No. 000044), attached hereto as Exhibit C.

Nowhere on the invoice do “sports bras” appear.

Applicant, through it reliance on Document Bates No. 000044, is maintaining that a

“shelf bra tank top” is the same thing as a “sports bra.” However, the two items are distinct. A shelf bra tank top is top that covers the entire torso, whereas a sports bra is a bra, not a top. See

15

Attachment 1 (Wikipedia definition and photograph of a “sport bra”) to Declaration of Leslie H.

Smith, attached hereto as Exhibit F. Applicant itself recognizes the distinction between “sports bras” and “tank tops with shelf bras,” as, on Applicant’s web site, located at www.templeworkoutgear.com, sports bras are separately categorized from tank tops with shelf bras, with a search for sports bras turning up only sports bras, see Attachment 2 to Declaration of

Leslie H. Smith, attached hereto as Exhibit F, and a search for tank tops turning up only tank tops (with and without shelf bras), see Attachment 3 to Declaration of Leslie H. Smith, attached hereto as Exhibit F.

A use-based application, such as the Application here, must be used in connection with all of the goods listed, or else the application is void ab initio. See Hurley Int’l, LLC v. Volta, 82

USPQ2d 1339 (TTAB 2007). Because Applicant’s mark was not used in connection with sports bras on or prior to the date claimed in the Application, the Application contains a material misstatement of fact that Applicant knew or should have known was false or misleading, and, as a result, is void ab initio.

V. CONCLUSION

For the reasons set forth herein, summary judgment should be granted in favor of

Temple, and this opposition should be sustained.

Respectfully Submitted,

Dated: March 17, 2009 /Leslie H Smith/ Leslie H. Smith Gregory Liacouras

LIACOURAS & SMITH, LLP 1515 Market Street, Suite 808 Philadelphia, PA 19102 (215) 241-5303 (phone) (215) 241-5306 (fax)

16

EXHIBIT A

EXHIBIT B

EXHIBIT C

EXHIBIT D Thank you for your request. Here are the latest results from the TARR web server.

This page was generated by the TARR system on 2009-02-28 14:24:37 ET

Serial Number: 79052334 Assignment Information Trademark Document Retrieval

Registration Number: 3564925

Mark

(words only): PHASE EIGHT

Standard Character claim: Yes

Current Status: Registered.

Date of Status: 2009-01-20

Filing Date: 2008-03-07

Transformed into a National Application: No

Registration Date: 2009-01-20

Register: Principal

Law Office Assigned: LAW OFFICE 115

If you are the applicant or applicant's attorney and have questions about this file, please contact the Trademark Assistance Center at [email protected]

Current Location: 650 -Publication And Issue Section

Date In Location: 2009-01-20

LAST APPLICANT(S)/OWNER(S) OF RECORD

1. Phase Eight ( & Designs) Limited

Address: Phase Eight (Fashion & Designs) Limited 21 Carnwath Road London SW6 3HR Legal Entity Type: Private English Company State or Country Where Organized: United Kingdom

GOODS AND/OR SERVICES

International Class: 014 Class Status: Active Jewelry and imitation jewelry; precious stones; precious metals and their alloys; articles made of precious metals or coated therewith, namely and clocks, bracelets, and Basis: 66(a) First Use Date: (DATE NOT AVAILABLE) First Use in Commerce Date: (DATE NOT AVAILABLE)

International Class: 018 Class Status: Active Leather and imitation leather; trunks and traveling bags; bags, namely, , purses, shoulder bags, clutches; valises; satchels; cases for travel kits sold empty; vanity cases sold empty; kitbags; rucksacks; string bags for shopping; beach bags; briefcases; wallets; key cases; credit card cases; business card cases; change purses; umbrellas, parasols; sticks Basis: 66(a) First Use Date: (DATE NOT AVAILABLE) First Use in Commerce Date: (DATE NOT AVAILABLE)

International Class: 025 Class Status: Active T-shirts, shirts, tops, , shorts, , swimwear; -wear, namely, dance , golf shirts, , gym suits, suits, jogging pants, jogging outfits, , muscle shirts, rugby and other sport specific shorts, shirts and tops, sports bras, sports shirts, pants and short sleeve shirts, track pants and suits, sweat shorts and pants, sports jerseys, walking shorts, warm up outfits and suits, and and suits; pants, , , sweatshirts, jumpers, , sweaters, vests, jackets, , ; , ; ; hats; caps; , mufflers, , nappies, neckties; ; gloves; neckbands, armbands as clothing, ; , , , tennis shoes, sports shoes, lounge shoes; socks; , , , body stockings; belts Basis: 66(a) First Use Date: (DATE NOT AVAILABLE) First Use in Commerce Date: (DATE NOT AVAILABLE)

International Class: 035 Class Status: Active Retail department store services; procurement consultation services in the field of purchasing clothing, , clothing accessories and jewelry for others; mail order catalog services featuring general mechandise Basis: 66(a) First Use Date: (DATE NOT AVAILABLE) First Use in Commerce Date: (DATE NOT AVAILABLE)

ADDITIONAL INFORMATION

(NOT AVAILABLE)

MADRID PROTOCOL INFORMATION

International Registration Number: 0959978 International Registration Date: 2008-03-07 Priority Claimed: No Date of Section 67 Priority Claim: (DATE NOT AVAILABLE) International Registration Status: Request For Extension Of Protection Processed Date of International Registration Status: 2008-05-15 International Registration Renewal Date: 2018-03-07 Notification of Designation Date: 2008-05-15 Date of Automatic Protection: 2009-11-15 Date International Registration Cancelled: (DATE NOT AVAILABLE) First Refusal: Yes

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This page was generated by the TARR system on 2009-02-28 14:23:07 ET

Serial Number: 79035492 Assignment Information Trademark Document Retrieval

Registration Number: 3499255

Mark

(words only): ZETT

Standard Character claim: No

Current Status: Registered.

Date of Status: 2008-09-09

Filing Date: 2006-01-10

Transformed into a National Application: No

Registration Date: 2008-09-09

Register: Principal

Law Office Assigned: LAW OFFICE 112

If you are the applicant or applicant's attorney and have questions about this file, please contact the Trademark Assistance Center at [email protected]

Current Location: 830 -Post Registration

Date In Location: 2008-11-24

LAST APPLICANT(S)/OWNER(S) OF RECORD

1. Zett Kabushiki Kaisha

Address: Zett Kabushiki Kaisha 1-2-16, Karasugatsuji Tennoji-ku, Osaka-shi Osaka-fu 543-8601 Legal Entity Type: Corporation State or Country Where Organized: Japan

GOODS AND/OR SERVICES

International Class: 003 Class Status: Active and cream; shoe black, namely, shoe polish; polishing preparations; polishing creams for leathers; polishing oil for leathers; leather lotions; shoe cream; shoe polish; cleaning preparations for shoes; deodorant sprays for personal use; cleaning preparations for use on baseball and softball gloves and shoes Basis: 66(a) First Use Date: (DATE NOT AVAILABLE) First Use in Commerce Date: (DATE NOT AVAILABLE)

International Class: 004 Class Status: Active Grease for shoes and ; leather preserving oil and grease; oil for the preservation of leather; grease for the preservation of leather; grease for lubricating and preserving leather; grease for shoes Basis: 66(a) First Use Date: (DATE NOT AVAILABLE) First Use in Commerce Date: (DATE NOT AVAILABLE)

International Class: 009 Class Status: Active Sports training simulators; spectacles, eyeglasses and safety and swimming goggles; protective for sports; helmets for protective use; for sports use; ; cases for eye glasses sold empty; speed guns, namely, radar guns for sporting events; cases for protective helmets sold empty; electronic scoreboards for games Basis: 66(a) First Use Date: (DATE NOT AVAILABLE) First Use in Commerce Date: (DATE NOT AVAILABLE)

International Class: 018 Class Status: Active Industrial packaging containers of leather; all purpose sports bags, athletic bags, shoe bags for storage, shoulder bags, traveling bags, Boston bags, sports bags sold empty, namely, baseball and softball bat bags, baseball bags, softball bags, shoe bags and catcher mask bags; pouches, namely, leather pouches, imitation leather pouches, drawstring pouches, all sold empty; vanity cases sold empty; hand bags sold empty; pack sacks sold empty, namely, sports packs; shoe bags for travel; drawstring pouches sold empty; leather straps Basis: 66(a) First Use Date: (DATE NOT AVAILABLE) First Use in Commerce Date: (DATE NOT AVAILABLE)

International Class: 020 Class Status: Active Scoreboards for sports, namely, non-electric, plastic or wooden sports scoring using manual dials that allow spectators to keep track of scores and other data at sports events Basis: 66(a) First Use Date: (DATE NOT AVAILABLE) First Use in Commerce Date: (DATE NOT AVAILABLE)

International Class: 025 Class Status: Active Clothing, namely, wrist bands, wind-resistant jackets, sport shorts, t-shirts, coats, , , sweatshirts, sweat pants, warm-up shirts, warm-up pants, sports ; belts; ; waistbands; belts for clothing; footwear; masquerade costumes; clothes for sports, namely, sports bras, shirts, coats, jackets, t-shirts, pants, underwear and uniforms; boots for sports; sweaters; special for ball sports, namely, sports bras, baseball uniforms, softball uniforms, sliding pants, and jackets mainly designed for baseball or softball games; socks; sports stockings; for sports stockings; belts; caps; sun visors; headwear; shoes; sports shoes and spike shoes, namely, baseball spike shoes, softball spike shoes, baseball shoes and softball shoes; non-orthopedic shoe insoles; protective metal members for shoes; toe covers for the protection of shoe toes, namely, toecaps Basis: 66(a) First Use Date: (DATE NOT AVAILABLE) First Use in Commerce Date: (DATE NOT AVAILABLE)

International Class: 028 Class Status: Active Sports equipment, namely, hurdles, sports field training grids, balance balls and exercise trampolines; nets for sports use, namely, nets for baseball and softball games and practices; rosin for use by athletes; gloves for sports use, namely, baseball gloves, baseball replacement webbing and replacement finger for baseball gloves that protect the wearer's fingers against impact when catching a ball; baseball and softball bats; grip tapes for baseball and softball bats; exercise weights for adding weight to baseball and softball bats; baseball and softball bat stands; baseballs and softballs; batting gloves; baseball and football masks for protecting the face; sun shield and rain shield masks for protecting the face, namely, catchers' masks and fencing masks; leg guards for athletic uses; arm guards for sports; foot guards for sports; throat protectors for sports; chest protectors for sports; ankle supporters for sports; knee supporters for sports; supporters for sports; body exercising apparatus in the nature of manually operated muscle stretching equipment, weight and strength training equipment, quickness and legerity training equipment, namely, ropes, trampolines, balance boards, balance balls, slideboards, stretching bars and poles, weights, speed ladders; baseball and softball ball cases sold empty; baseball and softball bat cases sold empty; baseball bases; softball bases; pitcher's plates; line markers for sports fields; umpire baseball and softball cases sold empty; bags especially designed for umpire baseballs and softballs; ball pitching machines and replacement parts and replacement fittings; ball tossing machines and replacement parts and replacement fittings; wrist support for use in playing sports Basis: 66(a) First Use Date: (DATE NOT AVAILABLE) First Use in Commerce Date: (DATE NOT AVAILABLE)

ADDITIONAL INFORMATION

Color(s) Claimed: Color is not claimed as a feature of the mark.

Design Search Code(s): 26.13.14 - Quadrilateral (three or more quadrilaterals); Three or more quadrilaterals 26.13.21 - Quadrilaterals that are completely or partially shaded 26.13.25 - Quadrilaterals with one or more curved sides 27.03.01 - Geometric figures forming letters, numerals or punctuation

Prior Registration Number(s): 1201186 1263810 2093743 2192435

MADRID PROTOCOL INFORMATION

International Registration Number: 0916270 International Registration Date: 2006-01-10 Priority Claimed: Yes Date of Section 67 Priority Claim: 2005-07-13 International Registration Status: Request For Extension Of Protection Processed Date of International Registration Status: 2007-04-05 International Registration Renewal Date: 2016-01-10 Notification of Designation Date: 2007-04-05 Date of Automatic Protection: 2008-10-05 Date International Registration Cancelled: (DATE NOT AVAILABLE) First Refusal: Yes

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This page was generated by the TARR system on 2009-02-28 14:27:04 ET

Serial Number: 78963029 Assignment Information Trademark Document Retrieval

Registration Number: 3416236

Mark

(words only): COOL COMPRESSION

Standard Character claim: No

Current Status: Registered.

Date of Status: 2008-04-22

Filing Date: 2006-08-29

Transformed into a National Application: No

Registration Date: 2008-04-22

Register: Principal

Law Office Assigned: LAW OFFICE 104

If you are the applicant or applicant's attorney and have questions about this file, please contact the Trademark Assistance Center at [email protected]

Current Location: 650 -Publication And Issue Section

Date In Location: 2008-03-14

LAST APPLICANT(S)/OWNER(S) OF RECORD

1. Lontex Corporation

Address: Lontex Corporation 4th Floor 8 DeKalb Street Norristown, PA 19401 United States Legal Entity Type: Corporation State or Country of Incorporation: Pennsylvania

GOODS AND/OR SERVICES

International Class: 025 Class Status: Active Men's, women's and children's clothing, namely, socks, underwear including boxer shorts, , underpants, and long johns, tshirts, polo shirts, swimwear, compression shirts, compression shorts, compression tights, , sweatshirts, body armor carrier compression shirts for military and law enforcement personnel, sports bras, halter tops, singlets, caps, hats, headbands, bandanas, balaclavas, and shoes Basis: 1(a) First Use Date: 2007-06-18 First Use in Commerce Date: 2007-06-18

ADDITIONAL INFORMATION

Color(s) Claimed: Color is not claimed as a feature of the mark.

Disclaimer: "COMPRESSION"

Description of Mark: The mark consists of the words "COOL COMPRESSION" next to the stylized configuration of a man.

Design Search Code(s): 02.01.33 - Grotesque men formed by letters, numbers, punctuation or geometric shapes; Stick figures 02.09.05 - Humans, including men, women and children, depicted running; Running, humans 02.09.14 - Dancing, humans; Humans, including men, women and children, depicted dancing

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This page was generated by the TARR system on 2009-02-28 14:28:29 ET

Serial Number: 79021062 Assignment Information Trademark Document Retrieval

Registration Number: 3233645

Mark

(words only): B

Standard Character claim: No

Current Status: Registered.

Date of Status: 2007-04-24

Filing Date: 2005-10-31

Transformed into a National Application: No

Registration Date: 2007-04-24

Register: Principal

Law Office Assigned: LAW OFFICE 102

If you are the applicant or applicant's attorney and have questions about this file, please contact the Trademark Assistance Center at [email protected]

Current Location: 650 -Publication And Issue Section

Date In Location: 2007-04-24

LAST APPLICANT(S)/OWNER(S) OF RECORD

1. Willy Bogner GmbH & Co.; Kommanditgesellschaft auf Aktien

Composed Of: Bogner Sport GmbH & Co. KG a Limited Partnership of Address: Willy Bogner GmbH & Co.; Kommanditgesellschaft auf Aktien Sankt-Veit-Strasse 4 81673 München Fed Rep Germany Legal Entity Type: PARTNERSHIP LIMITED BY SHARES State or Country Where Organized: Fed Rep Germany

GOODS AND/OR SERVICES

International Class: 009 Class Status: Active Eyewear, namely protective eyewear, eyeglasses, goggles for skiing and snowboarding, spectacle frames, spectacle cases, sunglasses, ski-glasses, protective helmets for sports, in particular for skiing and snowboarding; mobile phones; apparatus for recording, transmission or reproduction of sound and images; blank magnetic recording media, namely, computer discs, sound recording discs, sound recording tapes, video tapes, floppy discs; prerecorded audio tapes featuring music; prerecorded video tapes featuring motion pictures about sports, leisure, recreational activities and music; prerecorded compact discs featuring music, prerecorded tapes and video tapes other than for music featuring motion picture films and documentaries in the field of sports, leisure and recreational activities; exposed cinematographic films, exposed camera and slide films, video disks, CDs, CD-ROMs and video tapes with recorded animated cartoons; dictating machines; blank recording discs, electronic automatic vending machines, mechanisms for coin-operated machines, namely, coin dispensers, coin changers, coin counting and sorting mechanisms; cash registers, calculating machines, data processors and computer hardware; fire extinguishers Basis: 66(a) First Use Date: (DATE NOT AVAILABLE) First Use in Commerce Date: (DATE NOT AVAILABLE)

International Class: 018 Class Status: Active Leather and imitation of leather as well as goods made thereof, namely backpacks, boston bags, handbags, purses, wallets, key cases; animal skins and hides; trunks and suitcases; umbrellas, parasols and walking sticks; whips and saddlery Basis: 66(a) First Use Date: (DATE NOT AVAILABLE) First Use in Commerce Date: (DATE NOT AVAILABLE)

International Class: 025 Class Status: Active Clothing, namely, , cycling shirts and cycling jackets, pants, trousers, riding pants, golf pants, ski pants, ski suits, sports shirts, sports jackets, anoraks, gymnastic clothing, namely, leotards, , tank shirts, exercise shorts, sweat socks and sports bras; raincoats, shorts, blousons, jackets, , coats, suits, skirts, shirts, , pullovers, stockings, evening dresses, , chasubles, blue jeans, , , blouses, swimming caps, , chemisettes, , sweaters, sweatshirts, sweat pants, cardigans, underwear, polo shirts, pullovers, t-shirts, bandanas, ear muffs, gloves, mittens, shawls, shoulder wraps, scarves, socks, water proof clothing, namely, raincoats and trousers; , ; footwear and headwear Basis: 66(a) First Use Date: (DATE NOT AVAILABLE) First Use in Commerce Date: (DATE NOT AVAILABLE)

ADDITIONAL INFORMATION

Design Search Code(s): 26.01.17 - Circles, two concentric; Concentric circles, two; Two concentric circles 26.01.21 - Circles that are totally or partially shaded.

EXHIBIT E MR3765-2/OPP

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

Temple University - Of the Commonwealth : System of Higher Education : Opposition No. 91183558 Opposer, : In the Matter of S.N. 77/038,246 v. : BCW Prints, Inc. : Applicant.

ANSWER TO OPPOSER’S FIRST SET OF INTERROGATORIES ADDRESSED TO APPLICANT

Applicant, BCW Prints, Inc. (Applicant) by its undersigned Attorneys for its Answers to Opposer’s First Set of Interrogatories respectfully states as follows:

GENERAL OBJECTIONS

Applicant sets forth the following general objections, which are made to each and every Interrogatory, whether specifically stated in Response thereto or not. Each is incorporated by reference within the specific objection for each

Interrogatory as if set forth separately therein.

(1) Applicant objects to these Interrogatories to the extent that they impose any requirements in excess of those imposed by the Federal Rules of Civil

Procedure.

(2) Applicant objects to these Interrogatories to the extent that these requests are not reasonably calculated to lead to the discovery of admissible evidence.

Page 1 of 17 MR3765-2/OPP

(3) Applicant objects to these Interrogatories to the extent that these requests require the disclosure of information or documents that are subject to the

Attorney-Client Privilege or protected from disclosure by the Work Product

Doctrine or other applicable privileges.

(4) Applicant objects to these Interrogatories to the extent that these requests seek documents equally available to Opposer or are already in Opposer’s possession.

(5) Applicant objects to these Interrogatories to the extent that they are overly broad and unduly burdensome.

(6) Applicant objects to these Interrogatories to the extent that the information sought is confidential or propriety.

(7) Applicant objects to these Interrogatories to the extent that they require release of a third-party’s confidential propriety information or identification of a third-party’s documents that are in Applicant’s possession and are the subject of non-disclosure agreements or other confidential requirements.

Interrogatory No. 1: Identify and describe in detail each product and service that Applicant is currently using and/or that Applicant intends to use in the future under the mark

TEMPLE WORKOUT GEAR (and design).

Answer to Interrogatory No. 1:

See General Objections. Applicant specifically objects to Interrogatory No.

1 with regard to the “intends to use in the future”, since such is based upon

Page 2 of 17 MR3765-2/OPP speculation. Applicant does not know what Applicant will provide with the way of products and services in the future.

Without waiving its Specific and General Objections Applicant Responds to Interrogatory No. 1 as follows:

Applicant is using Applicant’s mark TEMPLE WORKOUT GEAR (and design) on tote bags; sports brassieres; shorts; yoga pants; warm-up jackets; t- shirts; tank top shirts; yoga bags for carrying mats; and .

Interrogatory No. 2:

Identify all persons who took part in or were responsible for the creation of the mark TEMPLE WORKOUT GEAR (and design).

Answer to Interrogatory No. 2:

Blossom Flash Winfree Address: 1900 Lansdowne Road, Suite S Halethorpe, MD 21227 Tel: 410-242-8027

Interrogatory No. 3:

Identify all persons who took part in or were responsible for the selection for use of the mark TEMPLE WORKOUT GEAR (and design).

Answer to Interrogatory No. 3:

Blossom Flash Winfree Address: 1900 Lansdowne Road, Suite S Halethorpe, MD 21227 Tel: 410-242-8027

Page 3 of 17

PAGES 4 THROUGH 13 OF APPLICANT’S ANSWERS TO OPPOSER’S FIRST SET OF INTERROGATORIES NOT INCLUDED IN EXHIBIT, BECAUSE NOT RELEVANT TO SUMMARY JUDGMENT MOTION MR3765-2/OPP

Interrogatory No. 18:

Identify each person who has any information or knowledge that relates to the date of first use of the mark TEMPLE WORKOUT GEAR (and design) in interstate commerce and/or in intrastate commerce.

Answer to Interrogatory No. 18:

Blossom Flash Winfree.

Interrogatory No. 19:

Identify each person who has any information or knowledge concerning each product and/or service that Applicant is currently selling or intending to sell in the future under the mark TEMPLE WORKOUT GEAR (and design).

Answer to Interrogatory No. 19:

See General Objections. Specifically Applicant objects to Interrogatory

No. 19 with regard to products “intending to sell,” since such is based on speculation.

Without waiving the General and Specific Objections Applicant Responds to Interrogatory No. 19 as follows:

Blossom Flash Winfree

Page 14 of 17 MR3765-2/OPP

Interrogatory No. 20:

Identify each document that relates to, provides proof of, reflects, establishes, or indicates the date of first use of the mark TEMPLE WORKOUT

GEAR (and design) in interstate and/or intrastate commerce.

Answer to Interrogatory No. 20:

See Answer to Interrogatory No. 9.

Interrogatory No. 21:

Describe in detail how Applicant is currently publicizing and advertising or intending to publicize and advertise, products and/or services under the mark

TEMPLE WORKOUT GEAR (and design).

Answer to Interrogatory No. 21:

Applicant publicizes and advertises it mark through hand-out postcards,

Document Bates #000053, catalogs, Document Bates #’s 000047-000052 and the internet, Document Bates #’s 000054-000071 www.templeworkoutgear.com.

Interrogatory No. 22:

Identify the demographic market(s) for the goods and/or services that

Applicant uses or intends to use in connection with the mark TEMPLE

WORKOUT GEAR (and design).

Answer to Interrogatory No. 22:

Page 15 of 17 MR3765-2/OPP

The goods sold by Applicant are for the general public and, in particular, for persons who would be interested in workout clothing.

Interrogatory No. 23:

Identify where Applicant has advertised, or intends to advertise, its

TEMPLE WORKOUT GEAR (and design) goods and/or services.

Answer to Interrogatory No. 23:

See Answer to Interrogatory No. 12.

Applicant intends to advertise in a periodical entitled “Washington

Woman”.

Interrogatory No. 24:

Identify all persons who participated in any way in the preparation of the answers or responses to these interrogatories, and state specifically, with reference to interrogatory numbers, the area of participation of each such person.

Answer to Interrogatory No. 24:

See General Objections.

In answer to Interrogatory No. 24, Applicant has answered the

Interrogatories No. 1-24 and has submitted the Answers to her attorney, Morton J.

Rosenberg, Esq., Rosenberg, Klein & Lee, who has prepared Applicant’s Answers in typewritten form.

Page 16 of 17

EXHIBIT F IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

In the Matter of Application No. 77/038246 Published in the Official Gazette on December 18, 2007

Temple University–Of The Commonwealth : System of Higher Education, : : Opposer, : Opposition No. 91183558 : v. : : BCW Prints, Inc., : : Applicant. :

DECLARATION OF LESLIE H. SMITH

I, Leslie H. Smith, declare as follows:

1. I am outside trademark counsel for Opposer Temple University–Of The

Commonwealth System of Higher Education (“Temple”).

2. On March 7, 2009, I conducted a Wikipedia search (on www.wikipedia.org) for the term “sports bra,” and a true and correct copy of the results of that search are attached hereto as Attachment 1.

3. On March 17, 2009, I conducted a search for “sports bras” on Applicant’s web site, located at www.templeworkoutgear.com, and a true and correct copy of the results of that search are attached hereto as Attachment 2.

4. On March 17, 2009, I conducted a search for “tank tops” on Applicant’s web site, located at www.templeworkoutgear.com, and a true and correct copy of the results of that search are attached hereto as Attachment 3.

ATTACHMENT 1

Sports bra - Wikipedia, the free encyclopedia

Log in / create account SportsArticle Discussion bra Edit this page History From Wikipedia, the free encyclopedia

Sports bra is a bra that provides

firm support for the breasts. It is Navigation intended for wear during vigorous ● Main page exercise that might cause the ● Contents breasts to move uncomfortably, ● Featured content preventing discomfort and ● Current events Woman in a sports bra embarrassment during exercise. ● Random article Sports bras are sturdier than regular bras and offer greater support for Search the chest, thus increasing comfort and reducing the chance of damage

to the ligaments of the chest during high-impact , such as

jogging. Interaction

● About Wikipedia Contents [hide]

● Community portal ● 1 Design

● Recent changes ● 2 Levels of Control

● Contact Wikipedia ● 3 Exercise

● Donate to Wikipedia discomfort

● Help ● 4 References

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● What links here Design [edit]

● Related changes A sports bra is basically a tank top with the bottom half cut off. The

● Upload file first sports bra dates from 1977. Hinda Miller and Lisa Landahl cut up a

● Special pages pair of and sewed them together into a bra; it was

http://en.wikipedia.org/wiki/Sports_bra (1 of 6) [3/7/2009 1:07:45 PM] Sports bra - Wikipedia, the free encyclopedia

● Printable version [ ] marketed as the Jogbra. 1 Other designs use gel and water pads, ● Permanent link silver fibres, and air bags. A stitchless bra was made by , ● Cite this page molded, compressed, and shaped. Other bras are knitted in circular Languages [ ] patterns, giving varying stretch and support. 2 A common basis is a ● Nederlands stretchable, absorbent fabric such as Lycra, and may be designed to ● ••• draw perspiration away from the skin to reduce irritation. Sports bras ● Svenska can be classified into either encapsulation brassieres (with molded

cups), or compression brassieres that restrict movement by flattening

the breasts. Encapsulation is generally better for reducing discomfort;

some women prefer compression designs for modesty.

A number of women, particularly those with large breasts, find sports

bras helpful for easing pain and discomfort or if embarrassment

prevents them from participating. Some sports bras are meant to be

worn as outerwear, such as for jogging. Most bra research has

concentrated on sports bras, where discomfort is directly related to the

degree of nipple movement. While sports bras are more effective in

this regard than standard bras, they also vary considerably in their

effectiveness.

Levels of Control [edit]

Sports bras are specifically designed to offer the appropriate amount of

support during moderate to intense physical activity.

● Light Control Yoga, Walking and Gardening

● Medium Control Bicycling, Power Walking and

● Firm Control Tennis, Soccer and Jogging.

http://en.wikipedia.org/wiki/Sports_bra (2 of 6) [3/7/2009 1:07:45 PM] Sports bra - Wikipedia, the free encyclopedia

● Maximum Control Running, Intense Workouts, Boxing and

Horseback Riding.

Exercise discomfort [edit]

About 50 percent of women report some pain or discomfort in their

breasts during exercise. This varies considerably in intensity and may

depend on what they are wearing. In an Australian study 3 women (17-

21, cup sizes B and C) were photographed exercising bare breasted,

with two models of a bra, and with a particular sports bra. As

expected, breast motion was reduced by bras, and the sports bra was

the most effective. The women reported less discomfort with bras and

especially with the sports bra. However not all sports bras are created

[ ] equally and should be properly fitted. 3 A 2007 study found that breasts move in three planes of motion during exercise. This study

concluded that encapsulation bras are more effective than compression

bras at reducing total breast motion during exercise because

encapsulation bras reduce motion in two of the three planes, while

[ ] compression bras reduce motion in only one plane. 4 Although some women athletes are concerned that a sports bra may interfere with

breathing, and increased pressure on the rib cage has been

[ ] demonstrated, no significant effect on breathing can be shown. 5

References [edit]

1. ^ Miller, Hinda. "Jogbra and Beyond". Ms. Money. http://www.

msmoney.com/mm/success_stories/jogbra_beyond.htm. Retrieved on

2007-10-26.

http://en.wikipedia.org/wiki/Sports_bra (3 of 6) [3/7/2009 1:07:45 PM] Sports bra - Wikipedia, the free encyclopedia

2. ^ Casselman, Anne (November 2005). "The Physics of Bras".

Discover 26 (11). http://www.discover.com/issues/

nov-05/departments/physics-of-bras/.

3. ^ Mason, BR; Page, KA; Fallon, K (June 1999). "An analysis of

movement and discomfort of the female breast during exercise and

the effects of breast support in three cases". J Sci

Med Sport 2 (2): 134–44. doi:10.1016/S1440-

2440(99)80193-5. PMID 10476977.

4. ^ University of Portsmouth (2007, September 23). Bouncing Breasts

Spark New Bra Challenge.

5. ^ Bowles, KA; Steele, JR; Chaunchaiyakul, R (September 2005). "Do

current sports brassiere designs impede respiratory function?".

Med Sci Sports

Exerc. 37 (9): 1633–40. doi:10.1249/01.

mss.0000177590.75686.28. PMID 16177619.

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Categories: Brassieres | Sports clothing | 1990s fashion

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