Trademark Trial and Appeal Board Electronic Filing System. 39145
`
`ESTTA Tracking number: ESTTA32126
`
`Filing date3
`
`05/04/2005
`
`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
`
`NathanD.Pratt
`
`Granted to
`
`D3“?
`of previous
`extension
`
`Address
`
`05/04/2005
`
`6250 North Ridgecrest Lane
`Somis, CA 93066
`UNITED STATES
`
`Roger H. Stein
`§ Wallenstein Wagner & Rockey, Ltd.
`3 II South Wacker Drive, 53rd Floor
`Attorney
`information Chicago, IL 60606
`g UNITED STATES
`§ d0cket@wwrfirrn. c0n1,rstein@WWrfirrn. c0n1,Vk01en0@wWrfirrn. c0n1,mn10rneau1t@wwrfirn1.:
`Phone:3l2-554-3300
`
`Applicant Information
`
`Application No 78290107
`
`P“b::;‘i°“
`
` 01/04/2005
`
`Opposition
`Filing Date
`
`05/04/2005
`
`Opposition
`Period Ends
`
`§
`105/04/2005
`
`Applicant
`
`Z Gear, Inc.
`256 N. State Street
`
`

`

`Salt Lake City, UT 84103
`UNITED STATES
`
`Goodsl Services Affected by Opposition
`
`Class 025.
`
`All goods and seviees in the class are opposed, namely: clothing, namely, jackets, parkas,
`jumpsuits, sleeping suits, pants, gloves, Vests, baby clothes, namely baby buntings, baby
`pajamas, baby jackets
`
`Attachments Opposition.pdf ( 4 pages )
`
`Date
`
`05/04/2005
`
`

`

`Attorney Docket No. 602 T 019
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In re the matter of Application
`Serial No. 78/290,107
`for “Z GEAR”
`
`Nathan D. Pratt,
`
`Opposer,
`
`V.
`
`Z Gear, Inc.,
`
`Applicant.
`
`\&\&\é€\&%/\é%&/\.4’%/\/%
`
`Published: January 4, 2005
`
`Opposition No.
`
`NOTICE OF OPPOSITION
`
`Box TTAB
`Commissioner of Trademarks
`P.O. Box 1451
`
`ALEXANDRIA, VA 22313-1451
`
`Opposer Nathan D. Pratt (“Pratt” or “Opposer”), an individual residing at 6250 North
`
`Ridgecrest Lane, Somis, California 93066, believes he will be damaged by registration of the
`
`mark shown in Serial No. 78/290,107 in International Class 25 and hereby opposes the same.
`
`The grounds for opposition are as follows:
`
`1.
`
`Z Gear, Inc. (“Applicant”) seeks to register Z GEAR as a trademark for clothing,
`
`namely, jackets, parkas, j umpsuits, sleeping suits, pants, gloves, vests, baby clothes, namely
`
`baby buntings, baby pajamas, and baby jackets in International Class 25 with a U.S. filing date of
`
`August 20, 2003 as evidenced by publication of said mark in the Oflicial Gazette on January 4,
`
`2005. This application was filed as an Intent-to-Use Trademark Application.
`
`

`

`In re the matter of Application
`Serial No. 78/290,107 for “Z GEAR”
`Published: January 4, 2005
`
`2.
`
`Opposer owns Registration No. 2,770,125 for the mark Z-BOY for clothing,
`
`namely sports clothing and casual clothing, namely, shirts, jackets, bathing trunks, shorts, pants,
`
`swimwear, wetsuits and fleecewear, namely, sweat pants; sweat shorts, sweatshirts and jackets in
`
`lntemational Class 25, Registration No. 2,770,126 for the mark Z-BOYS for clothing, namely
`
`sports clothing and casual clothing, namely, shirts, jackets, bathing trunks, shorts, pants,
`
`swimwear, wetsuits and fleecewear, namely, sweat pants; sweat shorts, sweatshirts and jackets in
`
`International Class 25, and Application Serial No. 76/613,161 for the mark Z-CULT for clothing,
`
`namely sports clothing and casual clothing, namely, shirts, jackets, bathing trunks, shorts, pants,
`
`swimwear, wetsuits and fleecewear, namely, sweat pants, sweat shorts, sweatshirts and jackets,
`
`and shoes, caps, hats, belts and socks in International Class 25 (“Opposer’s Marks”).
`
`3.
`
`Since at least as early as June 1. 2002. Opposer has continually used. marketed,
`
`distributed and sold the products set forth in its registrations above (Reg. Nos. 2,770,125 and
`
`2,770,126) in interstate commerce using Opposer’s Z-BOY and Z-BOYS marks. Opposer’s use
`
`has not been abandoned, and Opposer is now using, marketing, distributing and selling the
`
`products set forth in its registrations above (Reg. Nos. 2,770,125 and 2,770,126) in interstate
`
`commerce using Opposer’s Z-BOY and Z-BOYS marks.
`
`4.
`
`Since at least as early as January 23, 2003, Opposer has continually used,
`
`marketed, distributed and sold the products set forth in its application above (Appl. Serial No.
`
`76/613,161) in interstate commerce using Opposer’s Z-CULT mark. Opposer’s use has not been
`
`abandoned, and Opposer is now using, marketing, distributing and selling the products set forth
`
`in its application above (Appl. Serial No. 76/613,161) in interstate commerce using Opposer’s Z-
`CULT Mark.
`
`5.
`
`Opposer’s Z-BOY and Z-BOYS marks were both registered on September 30,
`
`2003. Both registrations are valid and have not been abandoned by Opposer.
`
`6.
`
`Opposer’s application to register the Z-CULT mark was filed in the United States
`
`Patent & Trademark Office on September 21, 2004. This application is valid and has not been
`
`abandoned by Opposer.
`
`

`

`In re the matter of Application
`Serial No. 78/290,107 for “Z GEAR”
`
`Published: January 4, 2005
`
`7.
`
`Opposer provides its goods listed above under Opposer’s Marks in interstate
`
`commerce. Opposer spends considerable sums for promotional activities, packaging, and printed
`
`material promoting these goods, resulting in Valuable goodwill with respect to Opposer’s Marks.
`
`Opposer’s Marks have gained a valuable reputation in connection with Opposer’s high quality
`
`products.
`
`8.
`
`It is alleged that the mark proposed for registration by Applicant, namely, Z
`
`GEAR, is confusingly similar to Opposer’s Marks. Applicant’s mark will be used in connection
`
`with clothing, namely, jackets, parkas, jumpsuits, sleeping suits, pants, gloves, Vests, baby
`
`clothes, namely baby buntings, baby pajamas, and baby jackets in International Class 25 which
`
`are substantially similar, if not identical, to the goods of Opposer. Opposer markets its goods to
`
`a broad spectrum of customers, which are the same customers to whom Applicant will be
`
`marketing its goods. Applicant’s mark so nearly resembles Opposer’s Marks that Applicant’s
`
`mark is likely to cause confusion or cause mistake or deceive the purchasing public.
`
`9.
`
`It is further alleged that Applicant’s mark is deceptively similar to Opposer’s
`
`Marks so as to cause confusion and lead to deception as to the origin of Applicant’s goods sold
`
`under Applicant’s mark.
`
`10.
`
`It is also alleged that if Applicant is permitted to use and register the mark for
`
`these goods, as specified in the application herein opposed, confusion in trade, resulting in
`
`damage and inj ury to Opposer, would be caused and would result by reason ofthis similarity
`
`between the Applicant’s mark and Opposer’s Marks. Persons familiar with Opposer’s Marks
`
`would be likely to see Applicant’s goods expecting the goods to be somehow associated with
`
`Opposer. Any defect, objection, or fault found with Applicant’s goods marketed under its mark
`would necessarily reflect upon, and seriously injure, the reputation and goodwill that Opposer
`
`has established for its goods marketed under its Marks.
`
`ll.
`
`If Applicant is granted the registration herein opposed, it would thereby obtain at
`
`least a prima faeie exclusive right to the use of its mark. Such registration would be a source of
`
`damage and injury to Opposer. Therefore, Applicant should be denied registration of its mark
`
`under Section 2(d) of the Lanham Act.
`
`

`

`In re the matter of Application
`Serial No. 78/290,107 for “Z GEAR”
`Published: January 4, 2005
`
`WHEREFORE, the Opposer prays that Application Serial No. 78/290,107 for Z GEAR
`
`be rejected, and the mark therein sought for the goods therein specified in International Class 25
`
`be denied and refused, and that this Opposition be sustained in favor of Opposer.
`
`Attorney for Opposer, the undersigned below, hereby authorizes the Trademark Trial and
`
`Appeal Board to deduct the statutory filing fee of $300.00 for filing this Notice of Opposition
`
`from Deposit Account No. 23-0280.
`
`
`
`311
`
`. Wacker Drive, 53rd Floor
`
`Chicago, Illinois 60606-6630
`312.554.3300
`
`Counsel for Opposer
`
`Dated: 4 May 2005
`Chicago, Illinois
`
`