Notice of Opposition REALTREE MAKO (W6922568-3
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Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA927671 Filing date: 10/10/2018 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 Easton Diamond Sports, LLC Granted to Date 10/10/2018 of previous ex- tension Address 3500 Willow Lane Thousand Oaks, CA 91361 UNITED STATES Attorney informa- Jonathan M. Gelchinsky tion Pierce Atwood LLP 254 Commercial Street Portland, ME 04101 UNITED STATES [email protected] 207-791-1100 Applicant Information Application No 87599001 Publication date 06/12/2018 Opposition Filing 10/10/2018 Opposition Peri- 10/10/2018 Date od Ends Applicant Jordan Outdoor Enterprises, Ltd. 1390 Box Circle Columbus, GA 31907 UNITED STATES Goods/Services Affected by Opposition Class 024. First Use: 0 First Use In Commerce: 0 All goods and services in the class are opposed, namely: Cotton, wool, and synthetic fabrics having camouflage patterns Class 025. First Use: 0 First Use In Commerce: 0 All goods and services in the class are opposed, namely: Clothing, namely, shirts, pants, jackets, sweatshirts, gloves, footwear, and headwear Applicant Information Application No 87598995 Publication date 06/12/2018 Opposition Filing 10/10/2018 Opposition Peri- Date od Ends Applicant Jordan Outdoor Enterprises, Ltd. 1390 Box Circle Columbus, GA 31907 UNITED STATES Goods/Services Affected by Opposition Class 024. First Use: 0 First Use In Commerce: 0 All goods and services in the class are opposed, namely: Cotton, wool, and synthetic fabrics having camouflage patterns Class 025. First Use: 0 First Use In Commerce: 0 All goods and services in the class are opposed, namely: Clothing, namely shirts, pants, jackets, sweatshirts, gloves, footwear, and headwear Grounds for Opposition Priority and likelihood of confusion Trademark Act Section 2(d) Mark Cited by Opposer as Basis for Opposition U.S. Registration 4335436 Application Date 05/05/2011 No. Registration Date 05/14/2013 Foreign Priority NONE Date Word Mark MAKO Design Mark Description of NONE Mark Goods/Services Class 009. First use: First Use: 2011/05/12 First Use In Commerce: 2011/05/12 [ Sports eyeglasses, ] sports helmets, and protective face masks for use in [ hockey, ] baseball [, softball and lacrosse ] Class 025. First use: First Use: 2011/05/12 First Use In Commerce: 2011/05/12 pants, namely, baseball and softball pants, hockey pants, [ lacrosse shorts, ] sports pants, and padded pants for sports Class 028. First use: First Use: 2011/05/12 First Use In Commerce: 2011/05/12 [ Articles and ] * Hockey * equipment [for use in playing hockey, baseball, soft- ball, and lacrosse, ] namely, hockey sticks, shafts for hockey sticks, blades for * ice * hockey skates [, replacementblades for ice hockey skates, ] * and *ice hockey skates; [ hockey gear, namely, gloves, elbow pads, knee pads, shoulder pads, shin pads; ] ball sport equipment, namely, [ baseballs, softballs, ] baseball bats, softball bats, baseball gloves, softball gloves, catcher's mitts, catcher's pro- tective equipment, namely, chest protectors, catcher's masks, and leg guards; [ throat protectors, and knee wedges; lacrosse equipment, namely, lacrosse balls, lacrosse sticks, lacrosse stick heads, lacrosse stick shafts, and lacrosse stick strings, ] protective pads for use in hockey, baseball, and softball, [ and lacrosse,] namely, shoulder pads, chest pads, knee pads, elbow pads, and shin pads; protective gloves, namely, [ baseball gloves, softball gloves, ] hockey gloves [ and lacrosse gloves, and ]body protectors for hockey, baseball, and softball, [ and lacrosse,] namely, throat guards, chest protectors, leg guards, shin guards, and facemasks Attachments 85313820#TMSN.png( bytes ) Notice of Opposition_REALTREE MAKO.PDF(89596 bytes ) Signature /Jonathan M. Gelchinsky/ Name Jonathan M. Gelchinsky Date 10/10/2018 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD Application No.: 87/599,001 EASTON DIAMOND SPORTS, LLC, Mark: REALTREE MAKO Opposer, Filing Date: September 7, 2017 v. Application No.: 87/598,995 JORDAN OUTDOOR ENTERPRISES, LTD., Mark: Applicant. Filing Date: September 7, 2017 NOTICE OF OPPOSITION Easton Diamond Sports, LLC (“Opposer”), a Delaware limited liability company having its principal place of business at 3500 Willow Lane, Thousand Oaks, California 91361, believes that it is being and will be damaged by the registration of the marks shown in U.S. Trademark Application Nos. 87/599,001 and 87/598,995, filed by Jordan Outdoor Enterprises, Ltd. (“Applicant”), and hereby opposes the same. As grounds for opposition, Opposer alleges that, upon actual knowledge with respect to itself and its own acts, and upon information and belief as to Applicant and Applicant’s marks: Opposer’s MAKO Mark 1. Opposer is the owner of one of the world’s leading sporting goods brands, EASTON, for a wide range of products in the fields of baseball/softball, hockey, cycling, archery, and others. Among its various brands, Opposer owns and has used the mark MAKO for various sporting goods products, as well as clothing for sporting use, such as baseball and softball pants. Opposer’s rights in the MAKO mark date back to at least as early as May 2011. {W6922568.3} 2. Opposer owns U.S. Registration No. 4,335,436 for the mark MAKO, covering, in pertinent part, “pants, namely, baseball and softball pants, hockey pants, sports pants, and padded pants for sports” in International Class 25, with a filing date of May 5, 2011, and a date of first use in commerce of May 12, 2011. A printout of this registration from the PTO’s TSDR database showing current status and title is attached as Exhibit A. 3. The foregoing registration is valid and subsisting. It constitutes prima facie evidence of Opposer’s exclusive right to use the MAKO trademark in connection with the goods recited therein. 4. Opposer has continuously used the MAKO mark in commerce and has enjoyed substantial sales of, and invested considerable money in advertising and promoting, its MAKO-branded goods throughout the United States. 5. Through continued use in commerce in connection with the advertising, promotion, and sale of MAKO-branded goods, Opposer’s MAKO mark has acquired considerable public recognition and goodwill, and is an important trademark asset of Opposer. 6. Through extensive use and promotion, Opposer’s MAKO-branded goods have enjoyed substantial commercial success, and consumers have come to recognize Opposer exclusively as the source of those goods. Applicant and Its Marks 7. Applicant Jordan Outdoor Enterprises, Ltd. is a Georgia corporation with an address at 1390 Box Circle, Columbus, GA 31907. {W6922568.3} 8. On September 7, 2017, Applicant filed Application Nos. 87/599,001 and 87/598,995 to register the marks shown above for use in connection with, among other things, clothing and related raw materials in International Classes 24 and 25, under Section 1(b), 15 U.S.C. § 1051(b), alleging a bona fide intent to use the marks in commerce. Likelihood of Confusion, 15 U.S.C. § 1052(d) 9. Opposer repeats and re-alleges each and every allegation set forth in Paragraphs 1 through 8. 10. Opposer’s use of the MAKO mark predates the filing date of the opposed applications and any date of first use that Applicant may allege. Opposer’s pleaded registration for the MAKO mark issued prior to the filing date of the opposed applications and any date of first use that Applicant may allege. 11. Applicant’s marks, which each incorporate Opposer’s MAKO mark in its entirety, are strikingly similar in appearance, sound, and overall commercial impression to Opposer’s previously used and registered MAKO mark. 12. Application Nos. 87/599,001 and 87/598,995 each recite, in pertinent part, the following goods in Class 24 and 25 that are closely related to the Class 25 goods covered by Opposer’s MAKO mark: Class 24: Cotton, wool, and synthetic fabrics having camouflage patterns Class 25: Clothing, namely, shirts, pants, jackets, sweatshirts, gloves, footwear, and headwear {W6922568.3} 13. Applicant’s marks so resemble Opposer’s previously used and registered MAKO mark as to be likely, when applied to the goods set forth in Paragraph 12, to cause confusion, or to cause mistake, or to deceive under Section 2(d), 15 U.S.C. § 1052(d). WHEREFORE, for the foregoing reasons, Opposer is being and will be damaged by the registration of the marks shown in Application Nos. 87/599,001 and 87/598,995, and respectfully requests that registration to Applicant be refused, in part, for the goods identified in Classes 24 and 25, and that this Opposition be sustained in favor of Opposer. A filing fee of $1,600 has been submitted electronically. If the filing fee is found to be insufficient for any reason, please charge the deficiency to Deposit Account No. 500282. Respectfully Submitted, EASTON DIAMOND SPORTS, LLC Dated: October 10, 2018 By: /s/ Jonathan M. Gelchinsky Jonathan M. Gelchinsky Michael C. Hernandez PIERCE ATWOOD LLP 254 Commercial Street Portland, ME 04101-4664 Telephone: (207) 791-1100 Facsimile: (207) 791-1350 Attorneys for Opposer {W6922568.3} EXHIBIT A {W6922568.3} Generated on: This page was generated by TSDR on 2018-10-10 16:33:05 EDT Mark: MAKO US Serial Number: 85313820 Application Filing May 05, 2011 Date: US Registration 4335436 Registration Date: May 14, 2013 Number: Register: Principal Mark Type: Trademark TM5 Common Status LIVE/REGISTRATION/Issued and Active Descriptor: The trademark application has been registered with the Office. Status: Registered. The registration date is used to determine when post-registration maintenance documents are due. Status Date: May 14, 2013 Publication Date: Jan. 24, 2012 Notice of Mar. 20, 2012 Allowance Date: Mark Information Mark Literal MAKO Elements: Standard Character Yes.