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PM001003441 .Pdf(5614308 Bytes ) Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA1092210 Filing date: 10/29/2020 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD Proceeding 91245750 Party Plaintiff Portland Mavericks Baseball Club, Inc. Correspondence FRANK J BONINI JR Address BONINI IP LAW LLC 150 N RADNOR CHESTER RD , SUITE F200 RADNOR, PA 19087 UNITED STATES Primary Email: [email protected] 484-382-3060 Submission Testimony For Plaintiff Filer's Name Frank J. Bonini, Jr. Filer's email [email protected] Signature /Frank J. Bonini, Jr./ Date 10/29/2020 Attachments 01 OPP Testimony Stewart Decl.pdf(1558372 bytes ) 02 Exhibit 1 to Stewart Decl - PM001003796.pdf(1931426 bytes ) 03 Exhibit 2 to Stewart Decl - PM001003441 .pdf(5614308 bytes ) IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD PORTLAND MAVERICKS BASEBALL CLUB, INC., Opposition No. 91245750 [Parent] Opposer, Opposition No. 91245751 v. Mark: PORTLAND MAVERICKS THE NATIONAL ASSOCIATION OF and design PROFESSIONAL BASEBALL LEAGUES, INC., ApplicAnt. CERTIFICATE OF SERVICE I hereby certify that true and correct copies of the following: 1. DECLARATION OF WILLIAM "BILL" STEWART; and 2. CERTIFICATE OF SERVICE, were served on the following, via Email on October 29, 2020: Mary Frances Love Attorney for Applicant, The National Association of Professional Baseball Leagues, Inc. Muncy, Geisler, Olds & Lowe, P.C. 4000 Legato Road Suite 310 Fairfax, VA 22033 [email protected], [email protected], [email protected], [email protected] Dated: October 29, 2020 /Frank J. Bonini, Jr./ 1 Opposition No. 91245750 [Parent] Opposition No. 91245751 Opposer's Testimony Declaration of William "Bill" Stewart EXHIBIT 1 Robert Fountain Deputy General Counsel Member Florida Bar VIA EMAIL June 8, 2017 Bill Stewart Portland Pickles [email protected] Subject: Portland Mavericks’ Name and Logos Dear Bill: We understand you are interested in using certain trademarks, specifically those of the historic Portland Mavericks club, belonging to The National Association of Professional Baseball Leagues, Inc. (the “NAPBL”) in connection with your amateur baseball team based in Portland, Oregon (the “Portland Pickles”). The Portland Mavericks marks are unique among sports teams and have become highly recognized and valuable property. The Portland Mavericks marks are also the subject of trademark registrations with the United States Patent and Trademark Office, and are part of a group licensing program with other Minor League Baseball teams’ marks across the country. Because it is important to ensure the proper use of our teams’ trademarks, and fulfill our obligations to the group licensing program, it is our policy to set up a non-exclusive, royalty- free permission arrangement between the NAPBL and an amateur baseball team that desires to use the NAPBL’s marks. It is, of course, in our mutual best interests to ensure that the NAPBL’s trademarks are used only with licensed goods and services of high quality, and it is important that anything associated with the Portland Mavericks maintain the NAPBL’s tradition and reputation of quality and wholesomeness. Accordingly, we hereby grant the Portland Pickles the non-exclusive, royalty free permission to use the Portland Mavericks trademarks listed in the attached Schedule A (collectively, the “Marks”) only (i) in connection with the Portland Pickles baseball team, (ii) in a manner that will enhance the good will and reputation that the Club has built up in these Marks, and (iii) pursuant to the guidelines below. (1) The Marks will not be altered in any manner and will be used only as displayed in Schedule A. (2) All use of the NAPBL’s trademarks is by permission only and does not establish any ownership or other rights in the Marks. All goodwill from your use of the Marks inures solely to the benefit of the NAPBL. (3) All uniforms, caps, equipment, and other products featuring the Marks must be produced by Official Minor League Baseball Licensees. Contact information for approved licensees and/or retailers is provided in Schedule B. (4) Samples or pictures of each item featuring the Marks must be submitted to the Minor League Baseball Licensing Department for quality control upon request. PM001003796 Mr. Bill Stewart June 8, 2017 Page 2 of 3 (5) All print materials or websites using the Marks must include the following notice: “Portland Mavericks trademarks are used with permission of Minor League Baseball. All rights reserved.” (6) This license may be revoked at any time by written notice to you. Upon any such revocation, all use of the Marks must immediately cease and any domain names you may have registered that contain the Marks must be immediately transferred to the NAPBL free of charge. If you are in agreement with the terms of this arrangement, please sign this letter and return it to us as soon as possible. We appreciate your tribute to the Portland Mavericks and wish you a successful season. Warm regards, Robert Fountain Deputy General Counsel The National Association of Professional Baseball Leagues, Inc. AGREED TO AND ACCEPTED BY: Bill Stewart Signature: _____ Bill Stewart, Owner of the Portland Pickles Date: _____ PM001003797 Mr. Bill Stewart June 8, 2017 Page 3 of 3 Schedule A Schedule B See attached Minor League Baseball National Retail and Concession Supplier Directory. PM001003798 .*/03-&"(6&#"4&#"--Ï NATIONAL LICENSEE DIRECTORY ® PM001003799 MiLB NATIONAL RETAIL AND CONCESSION SUPPLIER DIRECTORY 47 BRAND 5TH & OCEAN CLOTHING License Expires*:12/31/2017 License Expires*:12/31/2019 John Gentile National Retail Albert Derago National Retail 15 Southwest Park Telephone: (781) 320-1384 590 West 83rd Street Telephone: (305) 822-4606 Westwood, MA 02090 Hialeah, FL 33014 Email: [email protected] Email: [email protected] Website: www.47brand.com Website: neweracap.com Products Products FLEECE GIRLS NON REPLICA JERSEYS OUTERWEAR GIRLS PANTS POLO SHIRT GIRLS SHORTS SCARVES GIRLS T-SHIRTS SCRUM T-SHIRT HALTER TOPS SWEATERS LADIES FLEECE SWEATSHIRTS LADIES NON-REPLICA JERSEYS TRACK JACKET LADIES PANTS T-SHIRTS LADIES T-SHIRT LOUNGEWEAR ADJUSTABLE NON-REPLICA CAP NON-REPLICA JERSEY DRESSES ADJUSTABLE VISORS TANK TOPS BUCKET CAPS NON-REPLICA FITTED CAPS NON-REPLICA STRETCH FIT CAPS ALL STAR DOGS REPLICA ADJUSTABLE COTTON CAPS License Expires*:12/31/2019 REPLICA ADJUSTABLE TWILL CAPS Elan Ovadia National Retail REPLICA ADJUSTABLE WOOL CAPS 20 Hastings Road Telephone: (800) 391-3520 REPLICA FITTED BASEBALL CAPS (THE Marlboro, NJ 07746 FRANCHISE) Email: [email protected] Website: www.allstardogs.com REPLICA STRETCHFIT COTTON CAP Products REPLICA STRETCHFIT TODDLER CAPS REPLICA STRETCHFIT TWILL CAP DOG ACCESSORIES REPLICA STRETCHFIT YOUTH CAP DOG APPAREL STRETCHFIT VISORS DOG BED TODDLER REPLICA ADJUSTABLE CAPS DOG CAR MAGNETS WOMEN'S VISORS DOG COLLARS/LEASHES/HARNESSES/TAGS YOUTH BUCKET CAPS DOG SIGNS YOUTH HEADBANDS DOG TOYS YOUTH KNIT CAPS YOUTH REPLICA ADJUSTABLE CAPS YOUTH VISORS AMERICAN NEEDLE-RED JACKET License Expires*:12/31/2017 Robert Kronenberger National Retail 1275 Busch Parkway Telephone: (847) 251-4078 Buffalo Grove, IL 60089 Email: [email protected] Website: americanneedle.com Products ADJUSTABLE ADULT NON-REPLICA TWILL CAP ADJUSTABLE REPLICA CAP 6/8/2017 Updated licensee list available online at www.MiLB.net. * If license expiration date has passed, please contact the Minor League Baseball Office to verify the company's status. PM001003800 FLEECE BIMM RIDDER SPORTSWEAR JACKETS License Expires*:12/31/2017 LONG SLEEVE T-SHIRTS SWEATERS Bobbi Larson National Retail 817 2nd Avenue SE Telephone: (319) 364-3479 T-SHIRTS Cedar Rapids, IA 52403 Email: [email protected] Website: www.bimmridder.com AMI GRAPHICS Products License Expires*:12/31/2017 BIBS Matt Gahm National Retail DRESSES PO Box 157 Telephone: (603) 664-0317 Center Strafford, NH 03815 HENLEY SHIRTS Email: [email protected] INFANT ROMPERS Website: www.amigraphics.com POLO SHIRT Products RUFFLE SHIRTS CLUB BANNER CLOTH SHORTS HANGING PENNANT 16X22 VINYL SWEATSHIRTS TANK TOPS T-SHIRTS ANTIGUA GROUP TURTLENECKS License Expires*:12/31/2017 BUCKET CAPS Kevin O'Neill National Retail KNIT CAPS 16651 North 84th Avenue Telephone: (800) 562-9777 Peoria, AZ 85382 NON-REPLICA ADJUSTABLE CAPS Email: [email protected] REPLICA BASEBALL CAPS Website: antigua.com REPLICA FITTED IN SIZES XS, S, M, L, AND Products XL BACKPACKS VISORS BUTTON DOWN SHIRTS DUFFEL BAGS BMORE SPORTS - PTC INTERNATIONAL FLEECE License Expires*:12/31/2019 MOCK TURTLENECKS OUTERWEAR Gianni Andracchio National Retail 345 N.Charles Street 3rd Telephone: (443) 682-9123 POLO SHIRT Baltimore, MD 21201 SWEATER VESTS Email: [email protected] Website: bmoresports.com SWEATERS Products SWEATPANTS SWEATSHIRTS FOLDING CHAIRS TANK TOPS HOLIDAY ORNAMENTS TRAVEL KIT (NYLON) KEY CHAINS T-SHIRTS MEGAPHONE TURTLENECKS NEON SIGNS IN SHAPE OF BASEBALL WINDSHIRTS RUBBER MATS WOVEN SHIRTS SLEEVES FOR AUTO SIDE MIRROR SOUVENIR BASEBALLS SPORTS BALLS WRIST POCKET 6/8/2017 Updated licensee list available online at www.MiLB.net. * If license expiration date has passed, please contact the Minor League Baseball Office to verify the company's status. PM001003801 BOXERCRAFT CHOICE SPORTSCARDS License Expires*:12/31/2017 License Expires*:12/31/2017 Ryan Prowell National Retail Scott Smith National Retail 7131 Discovery Blvd. Telephone: (404) 355-9994 369 Turner Industrial Way Telephone: (610) 494-1270 Mableton, GA 30126
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