Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov ESTTA Tracking number: ESTTA1138976 Filing date: 06/08/2021 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 The J. Paul Getty Trust Granted to Date 06/09/2021 of previous ex- tension Address 1200 GETTY CENTER DRIVE LOS ANGELES, CA 90049 UNITED STATES Attorney informa- JANE SHAY WALD tion IRELL & MANELLA LLP 1800 AVENUE OF THE STARS, SUITE 900 LOS ANGELES, CA 90067 UNITED STATES Primary Email: [email protected] Secondary Email(s): [email protected], [email protected], mco- [email protected] 310-277-1010 Docket Number Applicant Information Application No. 88498012 Publication date 02/09/2021 Opposition Filing 06/08/2021 Opposition Peri- 06/09/2021 Date od Ends Applicant Lisa Bennett PO BOX 337 MANHATTAN BEACH, CA 90267 UNITED STATES Goods/Services Affected by Opposition Class 025. First Use: 0 First Use In Commerce: 0 All goods and services in the class are opposed, namely: Swimsuits, beach coverups, and dresses Grounds for Opposition Priority and likelihood of confusion Trademark Act Section 2(d) Marks Cited by Opposer as Basis for Opposition U.S. Registration 2921032 Application Date 11/17/2000 No. Registration Date 01/25/2005 Foreign Priority NONE Date Word Mark GETTY Design Mark Description of NONE Mark Goods/Services Class 025. First use: First Use: 1996/12/00 First Use In Commerce: 1997/12/00 Clothing and accessories, namely, [ shirts; blouses; T-shirts; ] sweatshirts; [golf shirts; neckwear, namely, ties andscarves; ] headwear, namely, [ hats, ] caps U.S. Registration 2981307 Application Date 08/06/2001 No. Registration Date 08/02/2005 Foreign Priority NONE Date Word Mark GETTY Design Mark Description of NONE Mark Goods/Services Class 018. First use: First Use: 1996/07/08 First Use In Commerce: 1996/07/08 [Handbags, umbrellas, purses, change-purses, book bags, cosmetic bags sold empty,] shoulder bags, souvenir bags, [clutch bags, wallets,] and tote bags U.S. Registration 2606522 Application Date 03/30/2000 No. Registration Date 08/13/2002 Foreign Priority NONE Date Word Mark GETTY Design Mark Description of NONE Mark Goods/Services Class 035. First use: First Use: 1996/07/08 First Use In Commerce: 1996/07/08 retail and on-line gift shop services; retail and on-line retail services featuring books, videos, tapes and other published, printed and pre-recorded works inthe fields of the arts and humanities Class 042. First use: First Use: 1996/07/08 First Use In Commerce: 1996/07/08 Promoting public awareness of the importance of the arts and humanities; pro- moting public awareness of the need for an international standard for describing art, antiques and antiquities through the creation of a uniform system for the classification of arts; promoting public awareness of the importance of the con- servation and preservation of works of arts and cultural properties; archaeologic- al services, namely arranging and conducting archaeological field projects and managing archaeological sites; restaurant services; [ association services, namely promoting the interests of museum patronsand members ] U.S. Registration 2145476 Application Date 10/15/1996 No. Registration Date 03/17/1998 Foreign Priority NONE Date Word Mark GETTY Design Mark Description of NONE Mark Goods/Services Class 041. First use: First Use: 1996/07/08 First Use In Commerce: 1996/07/08 housemark for a full line of educational and museum services in the arts and hu- manities U.S. Registration 2177869 Application Date 10/15/1996 No. Registration Date 08/04/1998 Foreign Priority NONE Date Word Mark THE GETTY Design Mark Description of NONE Mark Goods/Services Class 036. First use: First Use: 1983/01/01 First Use In Commerce: 1983/01/01 providing educational scholarships Class 041. First use: First Use: 1983/01/01 First Use In Commerce: 1983/01/01 housemark for museum services, [ educational research related to the arts and the humanities, ] education services, namely, conducting seminars and confer- encesin the fields of the arts and the humanities, and for development and dis- semination of educational materials in the fields of the arts and the humanities Class 042. First use: First Use: 1983/01/01 First Use In Commerce: 1983/01/01 housemark for promotion of public awareness of the importance of the arts and the humanities, [ promotion of the arts and the humanities in a global communic- ations network, ] consultation and research in the fields of the arts and the hu- manities, providing access to research databases about the arts and the human- ities, and for the retail gift shop U.S. Registration 2754831 Application Date 03/30/2000 No. Registration Date 08/26/2003 Foreign Priority NONE Date Word Mark THE GETTY Design Mark Description of NONE Mark Goods/Services Class 037. First use: First Use: 1954/04/15 First Use In Commerce: 1954/04/15 Conservation and preservation services for works of art, not including photo- graphs, and for cultural properties, namelycultural objects, buildings, historic cit- ies, towns and structures and archaeological sites Class 040. First use: First Use: 1954/04/15 First Use In Commerce: 1954/04/15 Photographic preservation and conservation services Class 041. First use: First Use: 1954/04/15 First Use In Commerce: 1954/04/15 Educational and museum services in the arts and humanities, namely, museum services; conducting art exhibitions; providing guided museum tours; [providing guided field tours in the arts and humanities; organizing and conducting lectures, conferences, classes, workshops, programsand seminars in the fields of the arts and humanities; ]developing and disseminating educational materials for others in the fields of the arts and humanities;[ conducting and arranging for the con- ducting of classes and workshops for students and members of the general pub- lic in the fields of the arts and humanities;conducting art education classes and workshops at the primary and secondary levels;] library services; [ lending and rental of art works, representations of art works and reproductions of artworks; training others in the conservation and preservation of artworks; training othersin the conservation and preservation ofcultural properties, namely, cultural objects, buildings, historic cities, towns and structures and archaeological sites; providing museum management training for museum directors, administrators, curators, stewards and educators; providing entertainment in the nature of live musical, theatrical and dance presentations; research in the fields of the arts and human- ities;] information services, namely, providing information pertaining tothe arts and humanities over a global computer network; providing on-line research data- bases[, information networks andwebsites ] in the fields of the arts and humanit- ies Attachments 76167412#TMSN.png( bytes ) 76301486#TMSN.png( bytes ) 76013708#TMSN.png( bytes ) 75181682#TMSN.png( bytes ) 76013714#TMSN.png( bytes ) Notice of Opposition - GETTY and GRAY - Appln No 88-498012.pdf(279329 bytes ) Signature /Jane Shay Wald/ Name JANE SHAY WALD Date 06/08/2021 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD In the Matter of: Applicant : Bennett, Lisa Serial No. : 88/498,012 Trademark : GETTY & GRAY Filed : July 2, 2019 Published : February 9, 2021 THE J. PAUL GETTY TRUST, Opposer, Opposition No. ____________ v. NOTICE OF OPPOSITION LISA BENNETT, Applicant. Opposer The J. Paul Getty Trust, a California charitable trust having its principal place of business at 1200 Getty Center Drive, Los Angeles, California 90049 (“Opposer”), believes that it will be damaged by the issuance of a registration for the trademark GETTY & GRAY as shown in Application Serial No. 88/498,012, filed by Lisa Bennett (“Applicant”) and published for opposition on February 9, 2021, with extension granted and hereby opposes said application. As grounds for the Opposition, Opposer alleges the following: 10959217 BACKGROUND 1. Opposer The J. Paul Getty Trust uses the marks GETTY, THE GETTY, THE J. PAUL GETTY MUSEUM and others for museum services and a variety of related goods and services. The J. Paul Getty Museum, commonly known as the Getty, is an art museum in California housed on two campuses, The Getty Center and Getty Villa. Use of the GETTY name inuring to the Getty has been uninterrupted since at least as early as 1954. The Getty serves a wide variety of audiences through its expansive range of exhibitions and programming in the visual arts, at its Museums and virtually, on line. Prior to the pandemic, the Getty received nearly two million in-person visitors/users each year, and an additional, substantial, number of on line visitors/users. During the pandemic, the number of on line Getty visitors/users has been substantial. In 2020, reflecting the pandemic months, the museum website Getty.edu, had approximately 8.9 million sessions and 5.9 million users. As a result of its activities the Getty has acquired substantial trademark rights in GETTY and GETTY-inclusive terms in connection with a broad array of goods and services (“Getty Marks”). 10959217 - 2 - 2. Opposer is the record owner of the following registrations for the GETTY mark for apparel and related goods and services. Attached as Exhibit A is a current copy of the information from the Trademark Office database records showing the current status and title for the registrations listed below: Trademark Registration Goods/Services Number/ Issue Date GETTY (Stylized) 2,921,032 Clothing and accessories, namely, 01/25/2005 sweatshirts; headwear, namely, caps, in International Class 25 GETTY (Stylized) 2,981,307 Shoulder bags, souvenir bags and tote 08/02/2005 bags, in International Class 18 2,606,522 Retail and on-line gift shop services; retail GETTY (Stylized) 08/13/2002 and on-line retail services featuring books, videos, tapes and other published, printed and pre-recorded works in the fields of the arts and humanities, in International Class 35 10959217 - 3 - 3.