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This Opinion Is Not a Precedent of the TTAB

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This Opinion Is Not a Precedent of the TTAB This Opinion is not a Precedent of the TTAB Mailed: January 14, 2021 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ Lotto Sport Italia S.p.A. v. Cara Johnson and Najeal Young _____ Opposition No. 91245013 _____ James J. Bitetto, of Tutunjian & Bitetto PC for Lotto Sport Italia S.p.A. Cara Johnson and Najeal Young, Pro se. _____ Before Wellington, Goodman and Larkin, Administrative Trademark Judges. Opinion by Goodman, Administrative Trademark Judge: Cara Johnson and Najeal Young (“Applicants”) filed an application to register the mark LOTTAGAME for the following:1 “Backpacks; Duffle bags; Tote bags” in 1 Application Serial No. 87840234 was filed on March 19, 2018, based upon Applicants’ allegation of a bona fide intention to use the mark in commerce under Section 1(b), 15 U.S.C. § 1051(b) of the Trademark Act. References to the briefs and the record refer to the Board’s TTABVUE docket system. Opposition No. 91245013 International Class 18 and “Hats; Jackets; Jerseys; Pants; Shirts; Shorts; Socks; Sweatbands; T-shirts; Tank tops; Wristbands as clothing; Warm-up suits” in International Class 25. Lotto Sport Italia S.p.A. (“Opposer”) opposes registration of Applicants’ LOTTAGAME mark on the ground of likelihood of confusion under Section 2(d), 15 U.S.C. § 1052(d) of the Trademark Act.2 Opposer has pleaded ownership of the following registered marks (“LOTTO marks”): LOTTO (typed drawing) 3 for pullovers, gloves, cardigans, jerseys, neckwear, sweaters, socks, stockings, tops, tights, trousers, leggings, skirts, jackets, jerkins, shirts, vests, waistcoats, jumpers, track suits, blouses, blousons, jeans, sweat pants, gym suits, knickers, pants, shorts, t-shirts, sweat-shirts, suits and dresses, overcoats, coats, anoraks, raincoats, belts, suspenders, loungewear, under-wear, beachwear, sleepwear, footwear, headwear in International Class 25; 2 Opposer also alleged dilution in paragraph 14 of the notice of opposition. This claim is insufficiently pleaded since Opposer did not affirmatively allege that its pleaded marks became famous prior to the filing date of Applicants’ intent-to-use application. Toro Co. v. Torohead, Inc., 61 USPQ2d 1164, 1174 (TTAB 2001). In any event, Opposer did not pursue its dilution claim during trial or in its brief, and we find that the claim is waived. Alcatraz Media, Inc. v. Chesapeake Marine Tours Inc., 107 USPQ2d 1750, 1753 (TTAB 2013), aff’d mem., 565 Fed. Appx. 900 (Fed. Cir. 2014). 3 Registration No. 2347644 issued May 2, 2000, first renewal; section 8 & 9 received. Effective November 2, 2003, Trademark Rule 2.52, 37 C.F.R. § 2.52, was amended to replace the term “typed” drawing with “standard character” drawing. A mark depicted as a typed drawing is the legal equivalent of a standard character mark. ProMark Brands Inc. v. GFA Brands, Inc., 114 USPQ2d 1232, 1236 n.5 (TTAB 2015) (citing Trademark Manual of Examining Procedure § 807.03(i)). - 2 - Opposition No. 91245013 4 for goods made of leather and imitation leather not included in other classes, namely, bags, handbags, carry-all bags, sport bags, shoulder bags, backpacks, travel bags, duffel bags, trunks, suit bags, carriers for suits, shirts and dresses, souvenir bags, clutch bags, key cases, book bags, cosmetic bags sold empty, rucksacks, briefcases and attaché cases, wheeled bags, wallets, pocket wallets, card wallets, document cases, business card cases, calling card cases, credit card cases, name card cases, purses, coin purses; trunks and traveling bags; umbrellas in International Class 18; Clothing, namely, shirts, body shirts, tank shirts, camp shirts, dress shirts, sweatshirts, t-shirts, knit shirts, long- sleeved shirts, short-sleeved shirts, moisture-wicking sports shirts, polo shirts, shirts for suits, sports shirts, wind shirts, pants, padded pants, gym pants, jogging pants, lounge pants, sports pants, moisture-wicking sports pants, petti-pants, stretch pants, sweat pants, tap pants, track pants, wind pants, Bermuda shorts, jackets, men's and women's jackets, outer jackets, padded jackets, sleeved or sleeveless jackets, sports jackets, sweat jackets, waterproof jackets, wind-jackets, athletic uniforms, coats, trousers, vests, skirts, dresses, jumpers, socks, stockings, tights, ties, underwear, pajamas, bathing suits, swim trunks, gloves, footwear, headgear, namely, hats, caps, caps with visors, bandannas, head scarves, sun visors, berets in International Class 25; Gymnastic and sporting articles not included in other classes, namely, gymnastic apparatus, shin guards for athletic use, soccer shin guards; sports balls, namely, footballs, paddleballs, lacrosse balls, racket balls, squash 4 Registration No. 4148339 issued May 29, 2012; Section 71 accepted. The description of the mark states: “The mark consists of the stylized word ‘LOTTO’ surrounded by a rectangle appearing to the right of two vertically connected chevrons surrounded by a square. In between the vertically connected chevrons is the shape of a diamond.” - 3 - Opposition No. 91245013 balls, soccer balls, basket balls, volley balls, tennis balls, golf balls, rugby balls, cricket balls, rubber balls, table tennis balls, tennis rackets, table tennis bats; tennis racket covers, squash, tennis and table tennis racket paddles, table tennis paddles, knee guards for athletic use, football gloves, golf gloves, baseball gloves; Bowling gloves, Handball gloves; Hockey gloves; chest protectors for sports; football or soccer goals, soccer goal nets, soccer ball knee pads in International Class 28; Retail and wholesale store services featuring clothing, sport clothing, footwear, sport footwear, headgear, belts, sports glasses, life-saving and protective clothing and footwear, protective helmets for the practice of sports, luggage, rucksacks, bags and traveling bags for sports, bags for sports articles, gymnastic and sports equipment, ball for playing sports, shin guards, knee guards and gloves for the practice of sports; Online wholesale and retail store services featuring clothing, sport clothing, footwear, sport footwear, headgear, rucksacks, bags and traveling bags for sports, bags for sports articles, gymnastic and sports equipment, ball for playing sports, shin guards, gloves for the practice of sports; On-line ordering services featuring clothing, sport clothing, footwear, sport footwear, headgear, belts, sports glasses, life-saving and protective clothing and footwear, protective helmets for the practice of sports, luggage, rucksacks, bags and traveling bags for sports, bags for sports articles, gymnastic and sports equipment, ball for playing sports, shin guards, knee guards and gloves for the practice of sports; Mail order services featuring clothing, sport clothing, footwear, sport footwear, headgear, rucksacks, bags and traveling bags for sports, bags for sports articles, gymnastic and sports equipment, ball for playing sports, shin guards, gloves for the practice of sports; Catalog ordering service featuring clothing, sport clothing, footwear, sport footwear, headgear, rucksacks, bags and traveling bags for sports, bags for sports articles, gymnastic and sports equipment, ball for playing sports, shin guards, gloves for the practice of sports in International Class 35; - 4 - Opposition No. 91245013 (stylized) 5 for clothing, namely, shorts, trousers, blouses, shirts, skirts, dresses, socks, shoes, sneakers, hats, gloves, and scarves in International Class 25; gymnastic and sporting equipment, namely, volleyballs, basketballs, soccer balls in International Class 28; LOTTO WORKS (standard characters)6 for Optical apparatus and instruments, namely, spectacles, spectacle glasses, spectacle frames, eyeglasses, eyeglass frames, eyeglass chains, eyeglass cords, eyeglass cases, anti-glare glasses, pince-nez, pince-nez chains, pince-nez cords, pince-nez mounting, pince-nez cases, eyeshades, anti-dazzle shades, anti-glare visors; measuring apparatus and instruments, namely, time clocks, time recording apparatus; life-saving apparatus and instruments, namely, protection devices in the nature of gloves and nets for personal use for protection against accidents, clothing for protection against accidents, irradiation and fire; protective clothing especially made for use in laboratories; gloves for protection against accidents; kneepads for workers; protective masks; riding helmets, workmen’s protective face-shields, protective helmets, protective helmets for sports, shoes for protection against accidents, irradiation and fire; safety restraints, other than for vehicle seats and sports equipment, namely, lanyards for safety purposes for fall protection in International Class 9; Clothing, namely, ready-made clothing, namely, shirts and pants; clothing of leather, namely, leather jackets, leather pants and leather skirts; clothing of imitations of leather, namely, imitation leather jackets, imitation leather pants and imitation leather skirts; waterproof clothing, namely, waterproof jackets and pants; clothing for gymnastics, 5 Registration No. 1379243 issued January 21, 1986, second renewal. 6 Registration No. 5415101 issued March 6, 2018. - 5 - Opposition No. 91245013 namely, leotards, gym pants and gym shorts; cyclists’ clothing, namely, cyclist jerseys; motorists’ clothing, namely, motorcycle jackets, motorcycle gloves and motorcycle rain suits; fishing vests; beach clothes, namely, beach cover-ups and beach shoes; swimsuits, bath robes, bathing suits, bathing drawers, bathing trunks, wet suits for water-skiing, masquerade costumes, combinations,
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