Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA1091823 Filing date: 10/28/2020 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 PENTA S.r.L. Granted to Date 10/28/2020 of previous ex- tension Address VIA PIAVE 130 MONTEBELLUNA (TREVISO), 31044 ITALY Party who filed FAST BRANDS S.r.L. Extension of time to oppose Relationship to Opposer PENTA S.r.L. is now the current owner of at least the US TM Reg. party who filed Nos.1778731 and 2495746 by virtue of an Assignment filed on July 30, 2020 Extension of time and duly recorded on July 30, 2020 on Reel/Frame 7011/0726, which trans- to oppose ferred ownership of these registrations from FAST BRANDS S.r.L. to PENTA S.r.L Attorney informa- JAMES J. BITETTO tion TUTUNJIAN & BITETTO, P.C. 401 BROADHOLLOW ROAD, SUITE 402 MELVILLE, NY 11747 UNITED STATES Primary Email: [email protected] Secondary Email(s): [email protected] 6318440080 Docket Number 374-659 Applicant Information Application No. 88525906 Publication date 06/30/2020 Opposition Filing 10/28/2020 Opposition Peri- 10/28/2020 Date od Ends Applicant Shen,meixian NO.78, CAICUO VIL. DONGHAI TN., CHENGXIANG PUTIAN, 351163 CHINA Goods/Services Affected by Opposition Class 025. First Use: 2018/08/21 First Use In Commerce: 2018/08/21 All goods and services in the class are opposed, namely: Athletic uniforms; Baseball caps; Belts; Bot- toms as clothing; Bras; Coats; Gloves; Hats; Infant and toddler one piece clothing; Insoles; Neckties; Scarfs; Shoes; Skirts; Swimsuits; Tee shirts; Underwear; Yoga pants; Yoga shirts Grounds for Opposition Priority and likelihood of confusion Trademark Act Section 2(d) Marks Cited by Opposer as Basis for Opposition U.S. Registration 1778731 Application Date 08/05/1991 No. Registration Date 06/29/1993 Foreign Priority NONE Date Word Mark AXO Design Mark Description of NONE Mark Goods/Services Class 009. First use: First Use: 1981/02/01 First Use In Commerce: 1981/02/01 protective kidney belts, chest protectors for motorcycle riders, motorcycle hel- mets, and visors for motorcycle helmets Class 016. First use: First Use: 1984/06/00 First Use In Commerce: 1984/06/00 decorative stickers Class 018. First use: First Use: 1986/04/00 First Use In Commerce: 1986/04/00 MOTORCYCLE BOOT BAGS, BELT BAGS, BACK PACKS, AND WALLETS, ALL FOR USE IN MOTORCYCLING Class 025. First use: First Use: 1984/03/07 First Use In Commerce: 1984/03/07 CLOTHING; NAMELY, JACKETS, PANTS, HATS,TIGHTS, MOTOCROSS SOCKS, INSOLES, BOOTSAND GLOVES, ALL FOR USE IN MOTORCYC- LING Class 028. First use: First Use: 1981/02/01 First Use In Commerce: 1981/02/01 KNEE PADS FOR USE IN MOTORCYCLING U.S. Registration 2495746 Application Date 02/17/2000 No. Registration Date 10/09/2001 Foreign Priority NONE Date Word Mark AXO Design Mark Description of NONE Mark Goods/Services Class 009. First use: First Use: 1999/01/02 First Use In Commerce: 1999/06/01 PROTECTIVE HELMETS FOR MOTORCYCLISTS, PROTECTIVE HELMETS FOR SKI, FOR BICYCLES AND FOR CARS, SPECTACLES, LENSES FOR SPECTACLES, SPECTACLE CASES, SPECTACLE CHAINS, SPECTACLE FRAMES, PROTECTIVE SPECTACLES FOR MOTORCYCLISTS, PROTECT- IVE CLOTHING FOR MOTORCYCLISTS, NAMELY, PROTECTIVESUITS, PROTECTIVE BIBS; PROTECTIVE CLOTHING FOR MOTORCYCLISTS Class 018. First use: First Use: 1999/01/02 First Use In Commerce: 1999/06/01 HANDBAGS, LUGGAGE, SHOULDER BAGS, BEACHBAGS, CLUTCH BAGS, ALL PURPOSE SPORTS BAGS, ATTACHE CASES, SCHOOL BAGS, TOTE BAGS, TRAVELLING BAGS, CREDIT CARD CASES, DOCUMENT CASES, PASSPORT CASES, COSMETICCASES SOLD EMPTY, KEYCASES, KNAP- SACKS, RUCKSACKS, BRIEFCASES, PURSES, WALLETS, TRAVELLING TRUNKS, SUITCASES, UMBRELLAS,PARASOLS, WALKING STICKS Class 025. First use: First Use: 1999/01/02 First Use In Commerce: 1999/06/01 BRASSIERES, CORSETS, SINGLETS, PETTICOATS, NIGHTGOWNS, PAJA- MAS, DRESSING GOWNS,PULLOVERS, BATH ROBES, BATHING SUITS, GLOVES, CARDIGANS, JERSEYS, NECKTIES, NECKERCHIEFS, SCARVES, SWEATERS, SOCKS, STOCKINGS, TIGHTS, TROUSERS, LEGGINGS, SKIRTS, JACKETS, JERKINS, SHIRTS, VESTS, WAISTCOATS, JUMPERS, TRACK SUITS, BLOUSES, JEANS, PANTIES, PANTS, BERMUDA SHORTS, T-SHIRTS, SWEAT-SHIRTS, SUITS AND DRESSES, LEATHER TRACK- SUITS, OVERCOATS, ANORAKS, COATS, RAINCOATS, BELTS, SUSPEND- ERS, GAITER STRAPS, SHOES, BOOTS, SKI BOOTS, SNOW BOARD BOOTS, MOTORCYCLIST BOOTS, SLIPPERS, HATS, CAPS Class 028. First use: First Use: 1999/01/02 First Use In Commerce: 1999/06/01 KNEE PROTECTORS, ELBOW PADS AND PROTECTIVE GLOVES FOR USE IN MOTORCYCLING Attachments 374-659 - Notice of Opposition.pdf(201309 bytes ) Signature /Susan Paik/ Name Susan Paik Date 10/28/2020 Attorney Docket: 374-659 Opposition Mark: AXOT IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD _________________________________ PENTA S.r.L., Opposer, Opposition No.: [TBD] v. Serial No.: 88/525,906 Mark: AXOT SHEN, Meixian Published: June 30, 2020 Applicant(s). _________________________________ Trademark Trial and Appeal Board U.S. Patent and Trademark Office P.O. Box 1451 Alexandria, VA 22313-1451 Notice of Opposition PENTA S.r.L. (“Opposer”), a SOCIETÀ A RESPONSABILITÀ LIMITATA organized and existing under the laws of Italy, and having a principal place of business at VIA PIAVE 130, MONTEBELLUNA (TREVISO) ITALY 31044, believes that it will be damaged by, and hereby opposes, the grant of the application of SHEN, Meixian (“Applicant”), an Individual of China citizenship at No.78, Caicuo Vil., Donghai Tn., Chengxiang, Putian CHINA 351163, to register the mark “AXOT” (Word mark) shown in the application Serial Number 88/525,906 filed July 20, 2019 for “Athletic uniforms; Baseball caps; Belts; Bottoms as clothing; Bras; Coats; Gloves; Hats; Infant and toddler one piece clothing; Insoles; Neckties; Scarfs; Shoes; Skirts; Swimsuits; Tee shirts; Underwear; Yoga pants; Yoga shirts” in International Class 025. Pursuant to 15 U.S.C. Section 1052, by and through its attorneys, Opposer hereby opposes the same. 1. By the application Serial No. 88/525,906 herein opposed, Applicant is seeking to obtain registration on the Principal Register of “AXOT” (Word mark) (hereinafter “Applicant’s ‘906 mark”) for goods in class 025, and particularly, for “Athletic uniforms; Baseball caps; Belts; 1 Attorney Docket: 374-659 Opposition Mark: AXOT Bottoms as clothing; Bras; Coats; Gloves; Hats; Infant and toddler one piece clothing; Insoles; Neckties; Scarfs; Shoes; Skirts; Swimsuits; Tee shirts; Underwear; Yoga pants; Yoga shirts” in International Class 025. 2. Applicant’s application Serial No. 88/525,906 for “AXOT” (Word mark) is a 1(a) basis application filed on January 20, 2019 and such mark was published for opposition on June 30, 2020. Opposer timely filed a request for a 90 day extension of time to oppose on July 30, 2020, which was duly granted by the Board on July 30, 2020, and extended the deadline to oppose to October 28, 2020. This Notice of Opposition is timely filed. 3. Opposer PENTA S.r.L. is the current owner of at least the following federal trademark registrations by virtue of an Assignment filed on July 30, 2020 and duly recorded on July 30, 2020 on Reel/Frame 7011/0726, which transferred ownership of these registrations from FAST BRANDS S.r.L. to PENTA S.r.L.: a. No. 1,778,731 (hereinafter “AXO ‘731 Registration”), registered on the Principal Register on June 29, 1993 for the trademark “AXO” (Word Mark) for “protective kidney belts, chest protectors for motorcycle riders, motorcycle helmets, and visors for motorcycle helmets” in International Class 009; for “decorative stickers” in International Class 016; for “MOTORCYCLE BOOT BAGS, BELT BAGS, BACK PACKS, AND WALLETS, ALL FOR USE IN MOTORCYCLING” in International Class 018; for “CLOTHING; NAMELY, JACKETS, PANTS, HATS, TIGHTS, MOTOCROSS SOCKS, INSOLES, BOOTS AND GLOVES, ALL FOR USE IN MOTORCYCLING” in International Class 025; and for “KNEE PADS FOR USE IN MOTORCYCLING” in International Class 028. b. No. 2,495,746 (hereinafter “AXO ‘746 Registration”), registered on the Principal Register on October 9, 2001 for the trademark “AXO” (Design Mark) which appears as follows: 2 Attorney Docket: 374-659 Opposition Mark: AXOT for “PROTECTIVE HELMETS FOR MOTORCYCLISTS, PROTECTIVE HELMETS FOR SKI, FOR BICYCLES AND FOR CARS, SPECTACLES, LENSES FOR SPECTACLES, SPECTACLE CASES, SPECTACLE CHAINS, SPECTACLE FRAMES, PROTECTIVE SPECTACLES FOR MOTORCYCLISTS, PROTECTIVE CLOTHING FOR MOTORCYCLISTS, NAMELY, PROTECTIVE SUITS, PROTECTIVE BIBS; PROTECTIVE CLOTHING FOR MOTORCYCLISTS” in International Class 009; for “HANDBAGS, LUGGAGE, SHOULDER BAGS, BEACH BAGS, CLUTCH BAGS, ALL PURPOSE SPORTS BAGS, ATTACHE CASES, SCHOOL BAGS, TOTE BAGS, TRAVELLING BAGS, CREDIT CARD CASES, DOCUMENT CASES, PASSPORT CASES, COSMETIC CASES SOLD EMPTY, KEYCASES, KNAPSACKS, RUCKSACKS, BRIEFCASES, PURSES, WALLETS, TRAVELLING TRUNKS, SUITCASES, UMBRELLAS, PARASOLS, WALKING STICKS” in International Class 018; for “BRASSIERES, CORSETS, SINGLETS, PETTICOATS, NIGHTGOWNS, PAJAMAS, DRESSING GOWNS, PULLOVERS, BATH ROBES, BATHING SUITS, GLOVES, CARDIGANS, JERSEYS, NECKTIES, NECKERCHIEFS, SCARVES, SWEATERS, SOCKS, STOCKINGS, TIGHTS, TROUSERS, LEGGINGS, SKIRTS, JACKETS, JERKINS, SHIRTS, VESTS, WAISTCOATS, JUMPERS, TRACK SUITS, BLOUSES, JEANS, PANTIES, PANTS, BERMUDA SHORTS, T-SHIRTS, SWEAT-SHIRTS, SUITS AND DRESSES, LEATHER TRACKSUITS, OVERCOATS, ANORAKS, COATS,