Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA159928
`ESTTA Tracking number:
`08/30/2007
`
`Filing date:
`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
`Entity
`Address
`
`WALK THE WALK WORLDWIDE LIMITED
`limited company
`Citizenship
`Exchange Tower, 19 Canning Street
`Edinburgh, EH38EH
`UNITED KINGDOM
`
`Scotland
`
`Attorney
`information
`
`Jason M. Drangel
`Epstein Drangel Bazerman & James, LLP
`60 East 42nd Street, Suite 820
`New York, NY 10165
`UNITED STATES
`mail@ipcounselors.com Phone:(212) 292-5390
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`78869533
`08/30/2007
`
`Publication date
`Opposition
`Period Ends
`
`07/31/2007
`08/30/2007
`
`Indigenous World, Inc.
`P.O. Box 176
`Crystal Bay, NV 89402
`UNITED STATES
`Goods/Services Affected by Opposition
`
`Class 036. First Use: 2006/03/01 First Use In Commerce: 2006/03/01
`All goods and services in the class are opposed, namely: Charitable fund raising
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act section 2(d)
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`Registration Date
`
`2850096
`
`06/08/2004
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`WALK THE WALK
`
`NONE
`
`Class 009. First use:
`
`Application Date
`
`09/26/2001
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Pedometers; photographic cameras; digital cameras; video cameras; disposable
`cameras; pre-recorded audio tapes, compact disc, digital video discs, and video
`tapes featuring information related to exercise, health, fitness, diet, lifestyle,
`walking, power walking, physical fitness training programs, breast cancer
`research, breast cancer diagnosis, breast cancer treatment, support of breast
`cancer patients, cancer related issues including the treatment and prevention of
`cancer and dealing with cancer, and also general health and medical related
`issues and charitable fund raising activities; eyeglasses; and sunglasses; parts
`for all the aforesaid goods
`Class 014. First use:
`Jewelry; ornamental pins; precious metal badges; brooches; pendants; watches;
`clocks; stopwatches; chronometers; cuff links; tie clips; tie pins; medals; parts for
`all of the aforesaid goods
`Class 016. First use:
`Paper badges; plastic name badges; plastic and paper bags; printed
`publications related to exercise, diet, physical fitness training programs, general
`health and medical issues, the diagnosis and treatment of cancer, research
`related to breast cancer, support of cancer patients, and fundraising related to
`cancer, namely information sheets, newsletters, leaflets, brochures, booklets,
`magazines, handbooks, training manuals and journals; sponsor forms;
`application forms; postcards; greeting cards; printed certificates; stationery;
`calendars; diaries; notepaper; paper banners; paper flags; note cards; note
`pads; pens, pencils, boxes for pens and pencils; maps; stickers; photographs;
`printed advertisement display board posters; playing cards; printed instructional
`and teaching materials in the field of exercise, diet, physical fitness training
`programs, general health issues, cancer research, cancer diagnosis, cancer
`treatment, support of cancer patients, and fund raising related to cancer
`Class 025. First use:
`Clothing, namely footwear, underwear, undergarments, lingerie, bras, t-shirts,
`vests, sweatshirts, shirts, pants, sweatpants, sweat tops, leggings, tracksuit
`bottoms, jogging pants, jackets, shorts, shoes, training shoes, hats, caps,
`baseball caps, baseball hats, belts, gloves and socks
`Class 036. First use:
`Charitable fundraising; financial sponsorship of charitable fundraising
`marathons, walks and power walking events and activities; charitable
`collections; organization of charitable fundraising collections; organization of
`fundraising activities and events; organization of fundraising walks and
`marathons
`Class 041. First use:
`Educational and training services, namely conducting classes and seminars in
`the fields of health, fitness, diet, lifestyle choices, walking, power walking, cancer
`research, cancer diagnosis, cancer treatment, support of cancer patients,
`charitable fundraising, general health and general fitness; conducting community
`athletic competitions and events, cultural fairs and exhibits; conducting
`entertainment exhibitions in the nature of marathons, power walking events,
`warm-up and aerobic programs, pre-event pasta parties, competition in the field
`of athletics events, games, live musical performances, variety shows, personal
`appearances by celebrities, and providing motivational and educational
`speakers
`
`U.S. Application
`No.
`Registration Date
`
`77075811
`
`NONE
`
`Word Mark
`Design Mark
`
`WALK THE WALK
`
`Application Date
`
`01/04/2007
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 009. First use:
`Photographic, cinematographic and optical representations and equipment;
`apparatus for recording, transmission or reproduction of sound or images;
`magnetic data carriers; audio tapes; recording discs; sound recordings; video
`recordings; computer discs; recording discs for visual images and sound;
`computers; downloadable electronic publications; downloadable website pages;
`glasses; sunglasses; cameras; parts and fittings for all of the aforesaid goods
`Class 014. First use:
`Jewellery; lapel pins made from precious metals and/or their alloys or coated
`with precious metals and/or their alloys; ornamental pins; badges; brooches;
`pendants; horological and chronometric apparatus and instruments; watches;
`clocks; stopwatches; key rings; key fobs; cufflinks; tie clips; tiepins; medals;
`parts and fittings for all of the aforesaid goods
`Class 016. First use:
`Books; newsletters; printed matter; journals; business cards; stationery; diaries;
`printed website pages; instructional and teaching material; Christmas cards;
`training materials including overhead projection transparencies; paper cardboard
`and goods made from these materials; printed publications; leaflets; booklets;
`brochures; magazines; sponsor forms; application forms; posters; cards;
`postcards; banners; advertisement boards; flags; certificates; photographs;
`calendars; office requirements; pens; pencils; boxes for pens and pencils; maps;
`stickers; carrier bags
`Class 018. First use:
`Leather goods
`Class 025. First use:
`Clothing; footwear; and headgear
`Class 026. First use:
`Lapel pins made from all materials excluding precious metals and their alloys
`Class 028. First use:
`Sporting articles not included in other classes
`Class 035. First use:
`Advertising; and business administration
`Class 036. First use:
`Financial affairs; charitable fundraising; financial sponsorship; charitable
`collections; organisation of collections; organisation of fundraising activities and
`events; organisation of fundraising walks and marathons
`Class 041. First use:
`Education; provision of training; entertainment; sporting and cultural activities;
`educational and training services relating to health and fitness; organisation of
`sporting and cultural activities and events
`Class 042. First use:
`Scientific research
`Class 044. First use:
`Medical services
`Class 045. First use:
`The provision of personal and social services rendered by others to meet the
`needs of persons with cancer or other illnesses by providing and assisting in the
`provision of information, care, emotional support and practical help for such
`persons and by providing and assisting in the provision of advice and other
`assistance for the families and carers of such persons
`
`

`
`U.S. Application/
`Registration No.
`Registration Date
`Word Mark
`Goods/Services
`
`NONE
`
`Application Date
`
`NONE
`
`NONE
`WALK THE WALK and WALK THE WALK and Design
`See above
`
`Attachments
`
`76317417#TMSN.gif ( 1 page )( bytes )
`77075811#TMSN.jpeg ( 1 page )( bytes )
`walk.pdf ( 4 pages )(84963 bytes )
`
`Signature
`Name
`Date
`
`/William C. Wright/
`William C. Wright
`08/30/2007
`
`

`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In re:
`
`U.S. Trademark:
`
`WALK THE TALK GLOBAL CITIZEN AWARDS
`
`Ser. No.
`Filing Date:
`
`78/869,533
`April 25, 2006
`
`. . _ . . . . . . . . . . . . . _ _ _ . . . . . . . _ . _ . - -x
`
`WALK THE WALK WORLDWIDE LIMITED
`
`Opposer,
`
`v.
`
`Opposition No.
`
`INDIGENOUS WORLD, INC.
`
`Applicant,
`. . . . _ _ _ . _ _ . . . . . . . . _ _ _ _ . . . . _ . . . _ _x
`
`NOTICE OF OPPOSITION
`
`Opposer, WALK THE WALK WORLDWIDE LIMITED (hereinafter “Opposer”), a limited
`
`company organized under the laws of Scotland, located and doing business at Exchange Tower, 19
`
`Canning Street, Edinburgh, Scotland EH3 8EH, believes that it is or will be damaged by registration
`
`of the trademark WALK THE TALK GLOBAL CITIZEN AWARDS, as shown in Application Ser.
`
`No. 78/869,533, filed on April 25, 2006, in the name Indigenous World, Inc., a corporation
`
`organized under the laws of Nevada and located and doing business at P.O. Box 176, Crystal Bay,
`
`Nevada 89402 (hereinafter “Applicant”), and hereby opposes same.
`
`As grounds for opposition, Opposer alleges that:
`
`

`
`
`
`1.
`
`Applicant has filed a use based application to register the trademark WALK THE
`
`TALK GLOBAL CITIZEN AWARDS, Ser. No. 78/869,533, in respect of “charitable fundraising” in
`
`Class 36, with the United States Patent and Trademark Office.
`
`2.
`
`The aforementioned application for registration was filed on April 25, 2006 based on
`
`an alleged date of first use and first use in commerce of March 1, 2006.
`
`3.
`
`Opposer is the owner of the trademarks WALK THE WALK and WALK THE
`
`WALK with a single footprint design.
`
`4.
`
`Opposer is the owner of the U.S. trademark registration of WALK THE WALK
`
`(single footprint design), Reg. No. 2,850,096, for, among other goods and services “charitable
`
`fundraising” in Class 36. Said registration issued on June 8, 2004, based on a corresponding foreign
`
`registration, and is valid and subsisting on the Principal Register. Opposer hereby gives notice, in
`
`accordance with Trademark Rule 2. l22(d)(2), that it will rely on said registration as evidence on its
`
`behalf in this proceeding, and that a status copy thereof showing present title will be introduced into
`
`evidence during Opposer’s testimony period.
`
`5.
`
`Opposer is the owner of the U.S. trademark application of WALK THE WALK, Ser.
`
`No. 77/075,81 1, for among other goods and services, “ charitable fundraising” in Class 36, based on
`
`a corresponding foreign registration.
`
`6.
`
`Opposer has prior rights in and to WALK THE WALK, as a trademark, service mark
`
`and/or as a trade name through ownership of registrations and use in commerce (“Opposer’s Mark”).
`
`7.
`
`Opposer’s Mark possesses a high degree of inherent distinctiveness and represents a
`
`valuable asset and symbol of goodwill of its business by identifying the goods and services which
`
`have their source of origin exclusively with Opposer, and by distinguishing such goods and services
`
`

`
`
`
`from the goods and services of others.
`
`8.
`
`Applicant’s alleged trademark WALK THE TALK GLOBAL CITIZEN AWARDS is
`
`confusingly similar to Opposer’s Mark in sound, appearance, meaning, and/or commercial
`
`impression.
`
`9.
`
`The services covered by the respective marks are identical, could travel in the same
`
`channels of trade, for use by the same general class of consumers, and would be marketed and
`
`distributed to the same types of individuals and organizations.
`
`10.
`
`Applicant’s alleged trademark WALK THE TALK GLOBAL CITIZEN AWARDS
`
`is confusingly similar to Opposer’s Mark and is likely to cause confusion, to cause mistake and to
`
`deceive potential purchasers as to the source of Applicant’s goods and services, with consequent
`
`injury to Opposer, the public, and the trade, and/or to cause the mistaken belief that App1icant’s
`
`goods and services originate with, are sponsored by, and/or are affiliated with Opposer.
`
`1 1.
`
`Opposer believes that it will be damaged if Applicant’s application for WALK THE
`
`TALK GLOBAL CITIZEN AWARDS issues to registration, as Applicant’s trademark is confusingly
`
`similar to Opposer’s Mark and Applicant’s aforesaid mark is or will be used on goods and services
`
`that are the same as, similar to, or commercially related to, the goods and services offered under
`
`Opposer’s Mark.
`
`WHEREFORE, Opposer, by its undersigned attorney, prays that application Serial No.
`
`78/869,533, be denied and its opposition thereto be sustained, and that Opposer may have all such
`
`further relief deemed to be necessary and just by the Trademark Trial and Appeal Board.
`
`

`
`
`
`Respectfully submitted,
`
`EPSTEIN DRAN
`
`RMAN &
`
`
`
`9/av 07.
`
`Our Ref.: 2194-006
`
` New York, New York 10 o
`Tel.:
`(212) 292-5390
`Fax:
`(212)292-5391
`
`CERTIFICATE OF MAILING
`
`I hereby certify that the foregoing Notice of Opposition is being deposited on this 30th day of
`August, 2007 via the U.S.P.T.O’s Electronic System for Trademark Trials and Appeals.