Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA372019 Filing date: 10/06/2010 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 American Snowsports Education Ass?n, Inc. - Education Foundation Granted to Date 10/06/2010 of previous extension Address 133 S Van Gordon, Suite 200 Lakewood, CO 80228 UNITED STATES

Attorney Carla W. Sledge information Hutchinson Black and Cook, LLC 921 Walnut St, Suite 200 Boulder, CO 80302 UNITED STATES [email protected] Phone:303-442-6514 Applicant Information

Application No 77119220 Publication date 06/08/2010 Opposition Filing 10/06/2010 Opposition 10/06/2010 Date Period Ends Applicant Pro Riders, Inc. 12859 State Highway 146 South Dayton, TX 77535 UNITED STATES Goods/Services Affected by Opposition

Class 009. All goods and services in the class are opposed, namely: Amusement apparatus adapted for use with television receivers only, Eyeglass cases, Eyeglass frames, Computer game programs, Gloves for protection against accidents; Knee pads for workers, Life jackets, Mouse pads, Neon signs, Pedometers, Personal stereos, Downloadable Electronic publications, namely, magazines and newsletters in the field of news events, how to do tricks, and behind the scenes photos showing skateboarding, BMX, and freestyle , Radios, Sunglasses, Goggles for sports, Video telephones, Walkie-talkies, Video game cartridges Class 016. All goods and services in the class are opposed, namely: Comic books, Loose leaf binders, Magazines in the fields of skateboarding, BMX, Motocross, Wakeboarding, Rodeo, and Surfing, Notebooks, Placards of paper or cardboard, Photographs, Posters, Postcards, Printed matter, namely, photos of riders in skateboarding, BMX, Motocross, Wakeboarding, Rodeo, and Surfing; Printed publications, namely, magazines and newsletters in the fields of skateboarding, BMX, Motocross, Wakeboarding, Rodeo, Surfing, Graphic reproductions, School supplies, namely, stationery, Tear off calendars, Decals, Bumper stickers, Pencils, Pens being office requisites Class 041. All goods and services in the class are opposed, namely: Amusement parks, Organization of sports competitions in the fields of offroad truck , skateboarding, BMX, rodeo, surfing, wakeboarding, motocross, Organization of entertainment competitions in the fields of offroad truck racing, skateboarding, BMX, FMX, rodeo, surfing, wakeboarding, motocross, Organization of entertainment exhibitions in the fields of offroad truck racing, skateboarding, BMX, rodeo, surfing, wakeboarding, motocross; Motion Picture Film Production, Game services provided online, namely, computer games, offroad truck racing, skateboarding, BMX, rodeo, surfing, wakeboarding, motocross, Holiday camp services, and Presentation of live performances by offroad truck racers, skateboarders, BMX performers, rodeo performers, surfers, wakeboarders, motocross performers Grounds for Opposition

Priority and likelihood of confusion Trademark Act section 2(d) Other Lack of bona fide intent to use the mark in connection with all of the goods and services identified in the Application as of the filing date of the Application Mark Cited by Opposer as Basis for Opposition

U.S. Application 77438294 Application Date 04/02/2008 No. Registration Date NONE Foreign Priority NONE Date Word Mark THE PRO RIDER Design Mark

Description of NONE Mark Goods/Services Class 016. First use: First Use: 1998/01/01 First Use In Commerce: 1998/01/01 Periodical magazines for snowboard instructors in the field of

Attachments 77438294#TMSN.jpeg ( 1 page )( bytes ) ASEA PRO RIDER NOTICE OF OPPOSITION (W0849050).PDF ( 10 pages )(41965 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 /carla w sledge/ Name Carla W. Sledge Date 10/06/2010 IN THE UNITED STATE PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

In the matter of Application Serial No. 77119220 Filed on March 1, 2007 For the Mark PRO RIDERS and design Published in the Official Gazette on June 8, 2010

______: AMERICAN SNOWSPORTS EDUCATION: ASSOCIATION, INC. - EDUCATION : FOUNDATION : : Opposer, : : Opposition No. ______v. : : PRO RIDER, INC. : NOTICE OF OPPOSITION : : Applicant. : : ______:

American Snowsports Education Association, Inc. - Education Foundation, a

Colorado nonprofit corporation (“Opposer”), believes it would be damaged by registration of the mark shown in Application Serial No. 77119220 (the “Application”) filed by Pro Rider, Inc., a Texas corporation (“Applicant”) for the mark PRO RIDERS and design (“Applicant’s Mark”), and pursuant to 15 U.S.C. § 1063, hereby opposes the same.

This Notice of Opposition has been timely filed, Opposer having requested and been granted a ninety-day extension of time in which to oppose, which extension expires on October 6, 2010.

As grounds for opposition, Opposer alleges as follow:

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1. Opposer, through its affiliated organization, American Association of

Snowboard Instructors (“AASI”), also known as American Snowsports Education

Foundation, Inc., first began using its mark THE PRO RIDER (“Opposer’s Mark”) in connection with its periodical magazine known as “The Pro Rider” for snowboard instructors in the field of snowboarding at least as early as January 1998.

2. Opposer’s magazine is currently distributed to approximately 30,000 member-subscribers (who are snowboarding and skiing instructors) living throughout the

United States. Opposer has consequently built up significant goodwill in connection with the use of Opposer’s Mark since 1998.

3. Opposer’s and/or AASI’s website(s) have prominently featured Opposer’s

Mark in connection with its magazine since 1998.

4. Opposer has spent a significant amount of time, money and effort over the last twelve years in advertising and promoting Opposer’s Mark and cultivating a reputation of providing excellent professional education, member benefits and snowsports industry information for snowboard instructors.

5. On April 2, 2008, Opposer filed application Serial No. 77438294 for

Opposer’s Mark in connection with its periodical magazine, with a first use in commerce date of January 1, 1998.

6. Opposer received a Notice of Suspension on July 17, 2008, which suspended Opposer’s application based upon Applicant’s pending Application for

Applicant’s Mark.

7. The Notice of Suspension stated that “Since [Opposer]’s effective filing date is subsequent to the effective filing date of the [Application], the latter, if and when

{W0849049 CWS} 2 it registers, may be cited against this application in a refusal to register under Section 2(d)

of the Trademark Act, 15 U.S.C. §1052(d). See 37 C.F.R. §2.83; TMEP §§1208 et seq.”

8. According to the Trademark Applications Registrations Retrieval system, on

March 1, 2007 Applicant filed Application Serial No. 77119220 for Applicant’s Mark on a

1(b) intent-to-use basis.

9. On information and belief, Opposer believes that at least prior to March 1,

2007, the date of the filing of the Application on a 1(b) basis, Applicant had never used

Applicant’s Mark in connection with any goods or services in interstate commerce.

10. Applicant’s Application seeks to register Applicant’s Mark for a wide

variety of goods and services in eleven classes as follows:

Class 009 Amusement apparatus adapted for use with television receivers only, Eyeglass cases, Eyeglass frames, Computer game programs, Gloves for protection against accidents; Knee pads for workers, Life jackets, Mouse pads, Neon signs, Pedometers, Personal stereos, Downloadable Electronic publications, namely, magazines and newsletters in the field of news events, how to do tricks, and behind the scenes photos showing skateboarding, BMX, and freestyle motocross, Radios, Sunglasses, Goggles for sports, Video telephones, Walkie-talkies, Video game cartridges Class 012 Bicycles, Racing bicycles, Bicycle parts, namely, frames, gears, grip tape, handlebar grips, horns, kickstands, handlebars, chains, forks, disk wheels, pumps, rims, saddles, spokes, stands, tires, sprockets, pedals, tags, seat post, inner tubes, safety pads, water bottle holders, and spoke clips, Mopeds, Motorcycles, Motorcycle parts, namely, grip tape, kickstands, heel guards, chromed safety pads, brake cables, clutch cables, fork bearings and races, fork seals, handlebars, brake levers, clutch levers, sprockets, drive chains, brake pads, handlebar grips, handlebar dampers, brake calipers, brake rotors, brake pedals, front spacers, shift levers, headlight mounts, handlebar throttles, inner tubes, tires, rims, spokes, hubs, engines, mud guards, non-skid devices for vehicle tires, seats, frames, Tricycles, Snowmobiles Class 014 Badges of precious metal, Bracelets, Jewelry Chains, Jewelry Charms, Tie clips, Tie pins, Electric Clocks and watches, Cuff links, Coins, Diamonds, Earrings, Ivory jewelry, Jewel cases of precious metal; Jewelry, Jewelry of yellow amber, Past costume jewelry, Cuff links, Medallions, Medals, Necklaces, Ornamental pins, Jewelry Ornaments,

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Jewelry Pins, Platinum ingots, Jewelry Rings, Straps for wristwatches, Jewelry Threads of precious metal, Jewelry Trinkets, Watch bands, Watch cases, Watch chains, Wristwatches Class 016 Comic books, Loose leaf binders, Magazines in the fields of skateboarding, BMX, Motocross, Wakeboarding, Rodeo, and Surfing, Notebooks, Placards of paper or cardboard, Photographs, Posters, Postcards, Printed matter, namely, photos of riders in skateboarding, BMX, Motocross, Wakeboarding, Rodeo, and Surfing; Printed publications, namely, magazines and newsletters in the fields of skateboarding, BMX, Motocross, Wakeboarding, Rodeo, Surfing, Graphic reproductions, School supplies, namely, stationery, Tear off calendars, Decals, Bumper stickers, Pencils, Pens being office requisites Class 018 Bags for sports clothing, Backpacks, Beach bags, Garment bags for travel, Handbags, School bags, School satchels, Traveling bags, Gym bags, Duffle bags, Sports bags, Carry all bags, and School book bags, purses of precious metal Class 021 Beer mugs, Heat insulated containers for beverages, Bottle openers, Coasters not of paper or table linen, Portable coolers, Cups of paper or plastic, Drinking flasks for travelers, Drinking glasses, Drinking vessels, Lunch boxes, Paper plates, Mugs, Coffee cups Class 025 Clothing, namely, Bandanas and neckerchiefs, Bath robes, Bath sandals, Bath slippers, Bathing suits, Bathing trunks, Beach clothes, namely, swimsuits, Beach shoes, Clothing, namely, Belts, Money belts, Berets, Ski boots, Bracing for clothing, namely, suspenders, Breeches for wear, Headwear, namely, Caps, Clothing of imitations of leather, namely, jackets, pants, and hats, Clothing of leather, namely, jackets, pants, hats, and shorts, Coats, Top coats, Cyclist clothing, namely, shorts and tops, Drawers for wear, Ear muffs, Esparto shoes or sandals, Fittings of metal for shoes and boots, Gloves, Gymnastic shoes, Hats, Headbands, Headgear for wear, namely, fitted caps, hats, headbands, Hoods, Jackets, Stuff jackets, Jerseys, Jumpers, Lace boots, Leggings, Mittens, Muffs, Neckties, Non-slipping devices for boots and shoes, Outer clothing, namely, parkas, Overalls, Overcoats, Pajamas, Pants, Cap peaks, Pullovers, Sandals, Scarves, Socks, Sweaters, Swim suits, Tee- shirts, Tights, Trousers, Underclothing, Anti-sweat underclothing, Underpants, Underwear, Uniforms, Vests, Hat Visors, Wet suits for water skiing, Wristbands, Anti-glare sun visors Class 028 Amusement machines, automatic and coin operated, Bags designed for skis and surfboards, Stationary exercise bicycles, Skating boots with skates attached, Sole coverings for skis, Dolls, Doll beds, Doll clothes, Doll feeding bottles, Doll houses, Doll rooms, Edges of skis, Elbow guards for sports, Exercisers, namely, chest expanders, Fairground ride apparatus, namely, ferris wheel, merry go rounds, Toy Flying discs, Hang Gliders, Safety Harness for sail boats, Protective padding being parts of sports suits, Radio controlled toy vehicles; Rocking horses; Roller skates; Sailboards; Mast for sailboards; Sailboard accessories,

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namely, safety harnesses; Scale model vehicles, Shin guards for sports, Skateboards, Ice skates, Inline roller skaters, Roller skates, Skating boots with skates attached, Ski bindings; Skis; Slides for playgrounds, Surfboards, Surf skis, Surfboard leashes, pool play articles, namely, balls, floats, umbrellas, floating toys, Swings, Toy vehicles, Toys, namely, dolls, action figures, cars, trucks, Water skis, Wax for skis, teeth protectors for athletic use Class 32 Non-alcoholic beverages, namely, soda, water, energy drinks, Non- alcoholic fruit extracts as beverages and as used in the preparation of beverages, Non alcoholic Fruit juice beverages, Fruit juices, Non alcoholic Fruit nectars, Ginger ale, Isotonic beverages, Lemonades, Lithia water, Malt beer, Mineral water, Seltzer water, Sherbets being beverages, Table waters, Tomato juice beverage, Vegetable juice beverages, and Beer Retail clothing stores, Retail sporting goods stores, Mail order catalog Class 35 services featuring consumer electronics, sports clothing, shoes, sporting goods, toys, games, posters, photos, autographed photos, videos, DVDs, music CDs, books, bags, back packs, headwear, decals, stickers, key chains, license plates, jewelry and calendars, Mail order services featuring consumer electronics, sports clothing, shoes, sporting goods, toys, games, posters, photos, autographed photos, videos, DVDs, music CDs, books, bags, back packs, headwear, decals, stickers, key chains, license plates, jewelry and calendars; Online retail consignment stores featuring consumer electronics, sports clothing, shoes, sporting goods, toys, games, posters, photos, autographed photos, videos, DVDs, music CDs books, bags, back packs, headwear, decals, stickers, key chains, license plates, jewelry and calendars Amusement parks, Organization of sports competitions in the fields of Class 41 offroad truck racing, skateboarding, BMX, rodeo, surfing, wakeboarding, motocross, Organization of entertainment competitions in the fields of offroad truck racing, skateboarding, BMX, FMX, rodeo, surfing, wakeboarding, motocross, Organization of entertainment exhibitions in the fields of offroad truck racing, skateboarding, BMX, rodeo, surfing, wakeboarding, motocross; Motion Picture Film Production, Game services provided online, namely, computer games, offroad truck racing, skateboarding, BMX, rodeo, surfing, wakeboarding, motocross, Holiday camp services, and Presentation of live performances by offroad truck racers, skateboarders, BMX performers, rodeo performers, surfers, wakeboarders, motocross performers

11. Upon information and belief, Applicant did not have a bona fide intent to use the PRO RIDERS mark in connection with all of the goods and services identified in the

Application as of the filing date of the Application.

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12. Prior to publication of Applicant’s Mark, Applicant amended the

Application to remove “snowboarding” from its identification of goods and services.

However, the Examining Attorney for Opposer’s application verbally continued the suspension and potential refusal of Opposer’s application on, inter alia, the ground that

Applicant’s use of Applicant’s Mark for other “boarding” sports, such as skateboarding, remained too similar to the goods covered by Opposer’s Mark.

13. The Application was published for opposition on June 8, 2010. On July 5,

2010, Opposer filed a request seeking a 90-day extension of time to oppose the pending

Application. The extension was granted on July 5, 2010, resulting in a revised deadline of October 6, 2010 for filing of this Notice of Opposition.

14. Applicant’s Mark is similar to, and will create a likelihood of confusion with, Opposer’s Mark, in which Opposer clearly has priority. Applicant’s Mark, PRO

RIDERS, is substantially identical to Opposer’s Mark, THE PRO RIDER, such that it is likely to confuse an ordinary person as to the source of the goods or services signified by

Applicant’s Mark.

15. Moreover, the goods and services of Applicant and the goods of Opposer are the same or closely related and appeal to the same class of consumers who, in particular, want to read about and participate in board sports. For example, snowboarders often participate in skateboarding or wakeboarding.

16. Opposer uses its THE PRO RIDER mark for its magazine in connection with snowboarding. Applicant has declared its intent to use Applicant’s Mark for goods and services including a magazine and other printed materials in connection with

“boarding” and other sports. Applicant’s Class 9 goods include “Downloadable

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Electronic publications, namely, magazines and newsletters in the field of news events, how to do tricks, and behind the scenes photos showing skateboarding, BMX, and

freestyle motocross” (emphasis added).

17. Furthermore, the goods of Opposer and Applicant are distributed through

similar channels of trade. Opposer mails its magazine THE PRO RIDER to its member-

subscribers and promotes the magazine on the AASI website

(http://www.aasi.org/01/TPR/TPR.asp). On information and belief, Applicant intends to

electronically distribute its magazine and newsletters.

18. Therefore, when (and if) Applicant’s Mark is used in connection with the

goods and services set forth in the Application (at least in Class 9), it is, inter alia, likely to cause confusion, or to cause mistake, or to deceive consumers and potential consumers within the meaning of 15 U.S.C. § 1052(d).

19. Opposer’s goodwill and reputation will be damaged and jeopardized by

Applicant’s use and registration of Applicant’s Mark.

20. The similarities between the Marks and the similarities of the actual and intended use of the Marks by the parties has resulted in the suspension of Opposer’s application and, in the event that Applicant’s Mark is registered, will result in the final refusal of Opposer’s application.

21. Registration of Applicant’s Mark will give prima facia evidence of validity, exclusivity and ownership of Applicant’s Mark and will give Applicant rights equal or superior to Opposer’s rights, all to the detriment of Opposer and despite Opposer having used Opposer’s Mark in commerce for at least nine years prior to the filing date of

Applicant’s Application.

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FOR THE REASONS STATED ABOVE, Opposer believes that it will be damaged by registration of Application Serial No. 77119220, and that such registration is likely to cause confusion in the minds of consumers or to cause mistake or to deceive, or otherwise injure, diminish or detract from the prior rights firmly established by Opposer in and to Opposer’s Mark, and therefore respectfully requests that the Trademark Trial and Appeal Board sustain this opposition and refuse registration of Applicant’s Mark.

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Dated: October 6, 2010 Respectfully submitted,

Hutchinson Black and Cook, LLC

By: /carla w sledge/ Carla W. Sledge 921 Walnut Street, Suite 200 Boulder, CO 80302 303-442-6514 Attorneys for Opposer

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CERTIFICATE OF SERVICE

The undersigned hereby certifies that on October 6, 2010, a true and correct copy of the foregoing NOTICE OF OPPOSITION was served by first class mail and email upon:

Karen B. Tripp, Esq. P.O. Box 1301 Houston, TX 77251-1301 Attorney for Applicant

/carla w sledge/ Carla W. Sledge

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