F‘!
`
`T713
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`’
`In the Matter of Application Serial No. 76/390,737 ‘
`Published in the Official Gazette on November 12, 2002
`
`01-36-2003
`
`' u.s. Pam! a TMOf?lTM Mail kept. or #40
`—
`r
`
`Opposition No.
`
`;
`
`.'
`
`,5
`
`ii
`
`
`
`PRO SELECT, INC.,
`
`Applicant. ‘
`
`NO DOUBT,
`
`Opposer
`
`-against-
`
`02/12/2003 KBIBBBNS
`
`01 FC:6402
`
`300.00 GP
`NOTICE OF OPPOSITION
`Opposer No Doubt, a California general partnership with an address at 450 North
`
`Roxbury Drive, 8th Floor, Beverly Hills, California 90210, believes that it be damaged by
`registration of the mark NO DOUBT which is the subject of Application Sefial No. 76/390,737,
`published in the Official Gazette on November 12, 2002, and therefore oppolises same.
`
`1
`
`As grounds for the opposition, Opposer alleges as follows:
`1,,
`Opposer has continuously used the trademark NO DOUBT
`
`interstate commerce
`
`the nature of live
`least as early as July 21, 1987 for entertainment services
`since at
`performances by a musical group; 1989 for clothing, namely, caps, sliirts, pants, shorts and
`
`jackets; 1995 for publications, namely, posters, calendars and photograiphs; and 1997 for and
`ornamental novelty badges and pins, and cloth patches for clothing.
`I
`
`Opposer owns the following U.S. federal trademark registrations for NO DOUBT:
`2.
`Reg. No. 2,416,708 in Int. Cl. 16, 25, 26 and 41 and Reg. No. 2,124,089.iin Int. Cl. 25.
`
`3.
`
`Opposer’s immensely popular music group has released six albums,
`I
`which have been certified “platinum” for sales of one million or more copies. Opposer has
`1
`l
`V
`
`three of
`
`
`
`T713
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`’
`In the Matter of Application Serial No. 76/390,737 ‘
`Published in the Official Gazette on November 12, 2002
`
`01-36-2003
`
`' u.s. Pam! a TMOf?lTM Mail kept. or #40
`—
`r
`
`Opposition No.
`
`;
`
`.'
`
`,5
`
`ii
`
`
`
`PRO SELECT, INC.,
`
`Applicant. ‘
`
`NO DOUBT,
`
`Opposer
`
`-against-
`
`02/12/2003 KBIBBBNS
`
`01 FC:6402
`
`300.00 GP
`NOTICE OF OPPOSITION
`Opposer No Doubt, a California general partnership with an address at 450 North
`
`Roxbury Drive, 8th Floor, Beverly Hills, California 90210, believes that it be damaged by
`registration of the mark NO DOUBT which is the subject of Application Sefial No. 76/390,737,
`published in the Official Gazette on November 12, 2002, and therefore oppolises same.
`
`1
`
`As grounds for the opposition, Opposer alleges as follows:
`1,,
`Opposer has continuously used the trademark NO DOUBT
`
`interstate commerce
`
`the nature of live
`least as early as July 21, 1987 for entertainment services
`since at
`performances by a musical group; 1989 for clothing, namely, caps, sliirts, pants, shorts and
`
`jackets; 1995 for publications, namely, posters, calendars and photograiphs; and 1997 for and
`ornamental novelty badges and pins, and cloth patches for clothing.
`I
`
`Opposer owns the following U.S. federal trademark registrations for NO DOUBT:
`2.
`Reg. No. 2,416,708 in Int. Cl. 16, 25, 26 and 41 and Reg. No. 2,124,089.iin Int. Cl. 25.
`
`3.
`
`Opposer’s immensely popular music group has released six albums,
`I
`which have been certified “platinum” for sales of one million or more copies. Opposer has
`1
`l
`V
`
`three of
`
`
`
`
`
`ta
`
`staged concert tours throughout the United States, is heard regularly on nationwide radio, is seen
`
`on .MTV and other television stations, and has been the subject of countless} newspaper and
`
`magazine articles. Merchandise featuring Opposer’s NO DOUBT mark is sold at concerts,
`
`music and retail stores and on the Internet at Opposer’s www.nodoubt.com web’ site. As a result
`I
`
`of this enormous use and promotion of the NO DOUBT mark in commerce, commencing in this
`I
`
`country in 1987, the NO DOUBT trademark is famous.
`
`4.
`
`Applicant Pro Select, Inc. has applied to register the mark NO {DOUBT for “golf
`
`clubs, golf club head covers, golf bags, and golf balls” in Int. Cl. 28.
`
`_’
`
`App1icant’s application was based on intent to use with a filing date of April 1,
`5.
`2002. Upon information and belief, no use of the mark in commerce was maide prior to April 1,
`2002. Accordingly, Opposer has priority with respect to its use ofthe mark hi0 DOUBT.
`6.
`The goods identified in Applicant’s application for NO DOUBT, Serial No.
`76/390,737, are closely related to the Opposer’s goods sold and services offered under the mark
`NO DOUBT, and which goods and services are the subject of Opposer’s1ifederal registrations.
`The marks are identical in appearance, visual impression, pronunciation and meaning.
`is
`7.
`The mark NO DOUBT as set forth in application Serial No. 76/390,737,
`identical to Opposer’s previously used and registered mark NO DOUBT fcir highly similar goods
`as to be likely to cause confusion, or to cause mistake, or to deceive the public. The public is
`likely to believe that App1icant’s goods are approved, endorsed, or sponsored by Opposer, or that
`Opposer is the source of Applicant’s goods, or that the goods ofApplicarit are in some other way
`I1
`
`associated with Opposer, all to Opposer’s grave injury and harm. This constitutes a violation of
`I
`‘.
`
`Section 2(a) ofthe Lanham Act, 15 U.S.C. §1052(d).
`
`
`
`
`
`U)
`
`8.
`
`Moreover, because Opposer’s NO DOUBT mark is famous, Applicant’s use and
`
`registration of an identical mark for closely related goods will dilute the distinctiveness of
`
`lI
`
`Opposer’s mark by blurring.
`
`9.
`
`The registration of Applicant’s mark is inconsistent with Opposer’s prior rights in
`
`the NO DOUBT mark and is inconsistent with Opposer’s statutory grant of exclusivity of use of
`the registered NO DOUBT mark, and would destroy Opposer’s investment and goodwill in its
`
`NO DOUBT mark. Accordingly, Applicant’s use and registration of the mark fi\IO DOUBT is in
`
`violation of Section 43(c) ofthe Lanham Act, 15 USC §1l25(c).
`
`3;
`
`l
`
`WHEREFORE, it is respectfully requested that this opposition be sustained and that the
`
`registration sought by application Serial No. 76/390,737 be denied.
`
`iI
`
`The Notice of Opposition is filed in duplicate. Opposer’s check in the amount of $300 is
`
`enclosed. Should this amount be insufficient for any reason, please chairge deposit account
`
`Respectfully submitted,
`
`ll
`
`;
`
`FROSS ZELNICK
`
`& ZISSU, P.C.
`
`_
`By’
`
`l
`
`3
`
`_
`‘
`Upton Dguglags
`-
`1'
`James Welnbergelr
`1
`866 United Nations Plaza:
`New York, New York 10017
`(212) 813-5900
`-
`
`number 23-0825.
`
`Dated: New York, New York
`January 30, 2003
`
`“Express Mail” mailing label No. EL 718087752 US
`Date of Deposit:
`January 30, 2003
`I hereby certify that this paper or fee is being deposited
`with the United States Postal Service “Express Mail Post
`Office to Addressee” service under 37 CFR 1.10 on the
`date indicated above and is addressed to the Assistant
`Commissioner
`for Trademarks, 2900 Crystal Drive,
`Arlington, Virginia 22202-3513.
`
`James D. Weinber er
`(Printed name of person mai "rig paper of fee)
`
`
`
`Attorneysfor Opposer
`
`l:\jweinberger\Nodo\030l30-0208251-Notice of Opposition-jdw.doc
`
`2
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