Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA954215 Filing date: 02/14/2019 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD Petition for Cancellation Notice is hereby given that the following party has filed a petition to cancel the registration indicated below. Petitioner Information Name Tommy John, Inc. Entity Corporation Citizenship Delaware Address 100 Broadway, 11th Floor New York, NY 10005 UNITED STATES Correspondence Stacy J. Grossman information Law Office of Stacy J. Grossman 888 Seventh Avenue, 10th Floor New York, NY 10106 UNITED STATES [email protected], [email protected] (212) 873-6120 Registration Subject to Cancellation Registration No. 5312733 Registration date 10/17/2017 Registrant Tucked Trunks, LLC 701 Brickell Key Blvd Apt 1611 Miami, FL 33131 UNITED STATES Email: [email protected] Goods/Services Subject to Cancellation Class 025. First Use: 2016/10/21 First Use In Commerce: 2016/10/21 All goods and services in the class are subject to cancellation, namely: Underwear; bottoms Grounds for Cancellation Priority and likelihood of confusion Trademark Act Sections 14(1) and 2(d) Marks Cited by Petitioner as Basis for Cancellation U.S. Registration 5018774 Application Date 05/13/2015 No. Registration Date 08/09/2016 Foreign Priority NONE Date Word Mark T Design Mark Description of The mark consists of the letter "T" in a rectangular block. Mark Goods/Services Class 025. First use: First Use: 2015/09/21 First Use In Commerce: 2015/09/21 Clothing, namely, underwear, underclothes, undergarments, boxer briefs, briefs,socks, shirts, undershirts, t-shirts, long-sleeved shirts, tank tops, sweat- shirts, shorts, pants, base layers, thermal underwear, long underwear; head- wear, hats, caps U.S. Registration 5650430 Application Date 08/16/2017 No. Registration Date 01/08/2019 Foreign Priority NONE Date Word Mark T Design Mark Description of The mark consists of the letter "T" in a rectangular bloc. Mark Goods/Services Class 035. First use: First Use: 2016/01/20 First Use In Commerce: 2016/01/20 In store and on line retail store services featuring clothing Attachments 86627884#TMSN.png( bytes ) 87571279#TMSN.png( bytes ) 021419 Tucked Trunks Cancellation Petition.pdf(125173 bytes ) Signature /Stacy J. Grossman/ Name Stacy J. Grossman Date 02/14/2019 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD TOMMY JOHN, INC., Cancellation No. Petitioner, v. Mark: TUCKED TRUNKS, LLC, Registration No.: 5,312,733 Registrant. PETITION FOR CANCELLATION Tommy John, Inc., a corporation organized under the laws of Delaware with an address at 100 Broadway, 11th Floor, New York, NY 10005 (“Petitioner”) believes that it will be damaged by the continued registration of the mark shown in U.S. Registration No. 5,312,733 (“Registrant’s Mark”) owned by Tucked Trunks, LLC, a limited liability company organized under the laws of the state of Florida believed to have an address at 701 Brickell Key Blvd., Apt. 1611, Miami, Florida 33131 (“Registrant”), and hereby opposes the same. As grounds for this cancellation, Petitioner alleges upon actual knowledge with respect to itself and its own facts, and upon information and belief as to other matters, the following: Petitioner and Its Use of its Invisible T Logo 1. Petitioner is an apparel company that manufactures and sells premium men’s and women’s underwear, undershirts, socks and clothing. 2. Since at least as early as 2015, Petitioner has used its Invisible T logo in connection with its goods. 3. Petitioner’s Invisible T logo is the subject of U.S. Trademark Registration No. 5,018,774 for “clothing, namely, underwear, underclothes, undergarments, boxer briefs, briefs, socks, shirts, undershirts, t-shirts, long-sleeved shirts, tank tops, sweatshirts, shorts, pants, base layers, thermal underwear, long underwear; headwear, hats, caps,” filed on May 13, 2015 and registered on August 9, 2016. 4. Petitioner’s Invisible T logo is also the subject of U.S. Trademark Registration No. 5,650,430 for “in store and online retail store services featuring clothing,” registered on January 8, 2019. 5. By virtue of its extensive use, the public associates the mark with Petitioner and its goods and services. 6. Petitioner’s registrations constitute prima facie evidence of the validity of its mark and registrations, and of Petitioner’s ownership of and exclusive right to use its mark in commerce in connection with the goods recited in the registrations. 7. In addition to these registrations, Petitioner owns extensive common law rights in its Invisible T logo in connection with clothing, including underwear. 8. Petitioner has advertised, distributed and sold clothing to consumers in the United States and in many countries around the world. Petitioner has expended substantial sums of money in marketing, advertising and promoting its Invisible T Mark, and through such efforts, has generated substantial goodwill and customer recognition in its Invisible T Mark. The public has come to associate the Invisible T Mark exclusively with Petitioner. Registrant and its Confusingly Similar Mark 9. On July 11, 2016, more than one year after Petitioner filed its first application to register its Invisible T Logo, Registrant filed an intent to use application to register Registrant’s Mark in connection with underwear and bottoms in Class 25 (the “Application”). 2 10. Petitioner’s Mark and the dominant design element of Registrant’s Mark are similar in appearance and convey a similar commercial impression. A side by side comparison of Petitioner’s Mark and Registrant’s Mark make the similarities apparent: vs Petitioner and Registrant use their mark in connection with identical goods. 11. As of the filing date of Petitioner’s Petition to Cancel, Registrant’s Mark lacked incontestable status pursuant to 15 U.S.C. §§ 1065, 1115. 12. Registrant’s use and registration of the Registered Mark in connection with clothing was and is without the consent or permission of Petitioner. 13. Registrant’s registration and use of such a highly similar mark is likely to cause consumer confusion. Activities Prior to Filing this Opposition 14. Petitioner, through its counsel, communicated with Registrant’s counsel on several occasions prior to the institution of this proceeding. 15. As of the date of this Petition to Cancel, Registrant’s counsel has not responded to Petitioner’s counsel’s recent request to amicably resolve this matter. 16. Accordingly, Petitioner is pursuing this cancellation proceeding. First Ground for Opposition: Likelihood of Confusion 17. Petitioner repeats and realleges each and every allegation set forth above. 18. Registrant’s Mark is substantially similar in appearance and connotation to Petitioner’s Mark. 3 19. Petitioner has priority based its valid and subsisting prior registration for its Mark covering its goods. In addition, Petitioner has priority based on its use of its Mark prior to the filing date of the Registrant’s application and any date of first use that could be asserted by Registrant. 20. Registrant’s Mark so resembles Petitioner’s prior used Mark as to be likely, when used and registered in connection with Registrant’s goods, to cause confusion, or to cause mistake, or to deceive the consuming public, and to dilute the distinctive nature of Petitioner’s Mark under 15 U.S.C. §§ 1052, 1063 and 1125, and should be canceled under Section 2(d) of the Lanham Act, 15 U.S.C. § 1052(d), as amended. WHEREFORE, Petitioner believes that it will be damaged by the continued registration of the mark shown in Registration No. 5,312,733, and requests that this cancellation be sustained, and that Registrant’s Registration be cancelled. Dated: February 14, 2019 Respectfully submitted, Stacy J. Grossman LAW OFFICE OF STACY J. GROSSMAN 888 Seventh Avenue, 10th Floor New York, NY 10106 Telephone: (212) 873-6120 ATTORNEY FOR PETITIONER Tommy John, Inc. 4 .