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Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA568113 Filing date: 10/30/2013 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 Steve Haberichter Granted to Date 11/06/2013 of previous extension Address 14149 S. Western Ave., #536 Blue Island, IL 60406 UNITED STATES Party who filed SteveHaberichter Extension of time to oppose Relationship to ESTTA appears to have eliminated the space between Opposer's first and last party who filed name. Extension of time to oppose Attorney J. Ryan Hinshaw information Howard B. Rockman, P.C. 525 W. Monroe Street Suite 2360 Chicago, IL 60661 UNITED STATES [email protected] Phone:312-628-8914 Applicant Information Application No 85879472 Publication date 07/09/2013 Opposition Filing 10/30/2013 Opposition 11/06/2013 Date Period Ends Applicant Gearhead Enterprises LLC P.O. Box 475 Lemont, IL 60439 ISRAEL Goods/Services Affected by Opposition Class 025. First Use: 2013/03/18 First Use In Commerce: 2013/03/18 All goods and services in the class are opposed, namely: Wearable garments and clothing, namely,shirts Grounds for Opposition Deceptiveness Trademark Act section 2(a) False suggestion of a connection Trademark Act section 2(a) Priority and likelihood of confusion Trademark Act section 2(d) Dilution Trademark Act section 43(c) Other Unacceptable specimen, 37 CFR § 2.56(c). No use in commerce, 15 U.S.C § 1127, 15 U.S.C. § 1051(a). Mark Cited by Opposer as Basis for Opposition U.S. Application 85930780 Application Date 05/13/2013 No. Registration Date NONE Foreign Priority NONE Date Word Mark LEADFOOT Design Mark Description of NONE Mark Goods/Services Class 041. First use: First Use: 2002/06/01 First Use In Commerce: 2002/06/01 Entertainment, namely, live performances by a musical band Attachments 85930780#TMSN.jpeg( bytes ) Notice of Opposition LEADFOOT.pdf(102969 bytes ) OPPOSITION EXHIBIT 1.pdf(4412994 bytes ) OPPOSITION EXHIBIT 2.pdf(2785778 bytes ) OPPOSITION EXHIBIT 3.pdf(1816309 bytes ) OPPOSITION EXHIBIT 4.pdf(334489 bytes ) Certificate of Service The undersigned hereby certifies that a copy of this paper has been served upon all parties, at their address record by First Class Mail on this date. Signature /J.Ryan Hinshaw/ Name J. Ryan Hinshaw Date 10/30/2013 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD In the Matter of: Application Serial No. 85/879,472 Published in the Official Gazette July 9, 2013 STEVE HABERICHTER, ) ) Opposer, ) ) v. ) Opposition No.________________ ) GEARHEAD ENTERPRISES LLC, ) ) Applicant. ) Notice of Opposition Opposer, STEVE HABERICHTER, a United States citizen, whose principal business address is 14149 S. Western Ave. #536, Blue Island, Illinois 60406, believes he will be damaged by registration of the mark LEADFOOT in International Class 25, as shown in Application Serial No. 85/879,472 filed by Applicant, Gearhead Enterprises LLC, and hereby opposes the same and requests that registration to Applicant be refused. As grounds for his opposition, Opposer alleges that: 1. Applicant seeks to register a mark consisting of the term “Leadfoot” for “wearable garments and clothing, namely, shirts” in International Class 25 (hereinafter “Applicant’s mark”). The application is a use-based application filed under 15 U.S.C. § 1051(1)(a) claiming a first use date of March 18, 2013. 2. Opposer has obtained the necessary extensions of time in which to file this Notice of Opposition. Accordingly, this Notice of Opposition is being timely filed. 3. Since at least as early as 2001, Opposer has owned and operated a business performing as a musical band under the names, servicemarks and trademarks LEADFOOT, LEAD FOOT, THE LEADFOOT BAND, and LEADFOOT STRING BAND. Opposer has carried on this business continually throughout the United States. See Exhibit 1 (Advertisements of Opposer’s Performances). 4. Additionally, Opposer has, for many years, sold merchandise bearing the LEADFOOT mark in conjunction with Opposer’s live performances as a musical band, including CDs, stickers, poster prints, hats, jackets, and shirts. Opposer’s offering of these items for sale to indicate the source of its services notably involves affixing the LEADFOOT mark to the same goods purportedly offered by Applicant. See Exhibit 2 (Opposer’s Goods Bearing the LEADFOOT Mark). 5. Opposer’s extensive advertising and promotion of its goods and services under the LEADFOOT mark features the use of internet advertising, print advertising, radio, and newspaper advertising, all of which are directed to and reach the public in both local and nationwide markets. See Exhibit 3 (Advertising and Promotion of Opposer’s Goods and Services). 6. As a result of many years of uses of the LEADFOOT mark such as those listed above, Opposer has developed exceedingly valuable goodwill with respect to the LEADFOOT mark. Such use has caused consumers nationwide to associate LEADFOOT with Opposer’s unique brand of music and live performance. As a result of Opposer’s efforts, the LEADFOOT mark is famous and was famous long prior to Applicant’s purported date of first use of the term “Leadfoot.” 2 7. Opposer’s strongest commercial presence in the marketplace is in the Midwestern region of the U.S., particularly in the greater Chicago area, northern Illinois, northwestern Indiana, southeastern Wisconsin, and southern Michigan. 8. Applicant is located in Lemont, Illinois, a suburb of Chicago, Illinois. On information and belief, Applicant offers its goods bearing the term “Leadfoot” primarily in this geographic area. 9. Despite Opposer’s long-standing prior rights in the LEADFOOT mark and his active participation and association with the type of goods Applicant purports to offer, Applicant filed its trademark application on or about March 18, 2013, to register the LEADFOOT mark for wearable garments and clothing, namely, shirts. 10. Applicant’s advertising and use of the mark LEADFOOT will inevitably reach the same consumers that Opposer targets with its use of the famous LEADFOOT mark. 11. Consumers, upon seeing the term “Leadfoot” used in conjunction with Applicant’s goods, are likely to mistakenly believe that the term and the goods provided in connection with it originated with or are connected with, sponsored by, associated with, or licensed or approved by Opposer. Thus, the registration and use by Applicant of the LEADFOOT mark in connection with the recited goods is likely to cause confusion, mistake, or deception in violation of 15 U.S.C. § 1052(d). 12. Issuance of a registration to Applicant for the LEADFOOT mark would also diminish the distinctive quality of Opposer’s rights in its famous mark and would blur and otherwise impair the distinctiveness of the mark, in violation of 15 U.S.C. § 1125(c). In addition, should Applicant’s accompanying images corresponding to the term 3 “Leadfoot” depart from the family-friendly atmosphere Opposer strives to offer and convey at his concerts and events, Applicant’s use of the LEADFOOT mark may also tarnish the good image of Opposer’s famous mark, and would thereby cause harm to Opposer’s reputation in violation of 15 U.S.C. §1125(c). 13. If a registration were issued to Applicant for the LEADFOOT mark, the confusion with Opposer’s mark would result in damage and injury to Opposer and the public. Registration of this term would give Applicant an unqualified right to wrongfully appropriate Opposer’s valuable goodwill and reputation associated with the LEADFOOT mark; to benefit from the likely confusion among purchasers led to believe that Applicant’s goods are related in some fashion to Opposer’s services; to dilute the distinctiveness of Opposer’s mark and harm the goodwill and reputation associated with his mark; to tarnish Opposer’s good name by offering confusingly similar goods not subject to Opposer’s quality controls; and to restrict the natural growth of Opposer’s long-standing business. 14. On information and belief, Applicant submitted just one specimen with its application purportedly depicting the mark as used on Applicant’s goods, described by Applicant as “Leadfoot Shirt.” To the contrary, Applicant’s specimen is a combination of two distinct images; a high-resolution digital image of the mark super-imposed on a photograph of someone wearing a plain black t-shirt. The t-shirt is basically a blank canvas, upon which Applicant digitally placed an artist’s rendering of the mark. The shirt portrayed in Applicant’s specimen does not actually exist. Nevertheless, Applicant misrepresents the specimen to the Examining Attorney as a photograph of a shirt actually bearing the mark. Applicant’s specimen is therefore not “a photograph, photocopy or 4 other reproduction of a specimen of the mark as actually used on or in connection with the goods, or in the sale or advertising of the services,” rendering it unacceptable under 37 CFR § 2.56(c). See Exhibit 4 (Applicant’s Specimen). 15. On information and belief, Applicant’s purported use of the term “Leadfoot” has been isolated to a small area within Lemont, Illinois, and therefore cannot qualify as “use in commerce” as that term is defined in 15 U.S.C § 1127. Accordingly, Applicant’s purported use cannot qualify it for registration as filed under 15 U.S.C. § 1051(a). WHEREFORE, Opposer requests that this Opposition be sustained and Application Serial No. 85/879,472 be refused registration. Respectfully submitted, STEVE HABERICHTER Date: October 29, 2013 By: /J. Ryan Hinshaw/ HOWARD B. ROCKMAN, P.C. 525 W. Monroe Street, Suite 2360 Chicago, IL 60661 (312) 628-8914 Telephone (312) 276-4209 Facsimile [email protected] 5 EXHIBIT 1 10/24/13 TRG Music Listings | The Reader's Guide Feature | Chicago Reader Newsletters Follow us Mobile Log in / Create Account Search chicagoreader.com GO NEWSBEST & FEATURES OF | CHICAGOTHE READER'S GUIDE FEATUREFALL ARTS CALENDAR STRAIGHTSeptember 27, 2001 DOPE SAVAGE LOVE YOU ARE HERE AGENDA FUN & FREE ARCHIVES MATCHES DEALS Like 0 Tweet 0 0 MoreShare TRG Music Listings Rock, Pop, etc.

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