`ESTTA252501
`ESTTA Tracking number:
`12/03/2008
`
`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
`Granted to Date
`of previous
`extension
`Address
`
`PGA Tour, Inc.
`12/03/2008
`
`112 PGA Tour Boulevard
`Ponte Vedra Beach, FL 32082
`UNITED STATES
`
`Attorney
`information
`
`Mark D. Passler
`Akerman Senterfitt
`222 Lakeview Avenue, 4th Floor
`West Palm Beach, FL 33401
`UNITED STATES
`kendra.waterman@akerman.com, mark.passler@akerman.com Phone:(561)
`653-5000
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`77428330
`12/03/2008
`
`Publication date
`Opposition
`Period Ends
`
`08/05/2008
`12/03/2008
`
`TPC Operations, LLC
`Suite 173 207 W. Los Angeles
`Moorpark, CA 93021
`UNITED STATES
`Goods/Services Affected by Opposition
`
`Class 016.
`All goods and services in the class are opposed, namely: Magazine in the field of finance, financial
`planning, sports and lifestyle
`
`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
`
`3403532
`
`03/25/2008
`
`Word Mark
`
`THE PLAYERS
`
`Application Date
`
`07/20/2006
`
`Foreign Priority
`Date
`
`NONE
`
`
`
`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 028. First use: First Use: 2007/05/01 First Use In Commerce: 2007/05/01
`Sporting goods, namely, golf clubs, golf bags, golf gloves, golf bag tags, golf
`club headcovers, golf balls, golf ball markers and small golfer's utensils used for
`repairing turf damage during play
`
`U.S. Registration
`No.
`Registration Date
`
`3270003
`
`07/24/2007
`
`Word Mark
`Design Mark
`
`THE PLAYERS
`
`Application Date
`
`10/20/2005
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 041. First use: First Use: 2007/01/02 First Use In Commerce: 2007/01/02
`Entertainment services in the nature of conducting professional golf tournaments
`
`U.S. Registration
`No.
`Registration Date
`
`3419026
`
`04/29/2008
`
`Word Mark
`Design Mark
`
`THE PLAYERS
`
`Application Date
`
`10/10/2006
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 021. First use: First Use: 2007/05/01 First Use In Commerce: 2007/05/01
`
`
`
`small domestic containers, namely, beverage glassware
`
`U.S. Registration
`No.
`Registration Date
`
`3298622
`
`09/25/2007
`
`Word Mark
`Design Mark
`
`THE PLAYERS
`
`Application Date
`
`10/10/2006
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 018. First use: First Use: 2007/05/01 First Use In Commerce: 2007/05/01
`golf umbrellas, athletic bags, totebags, briefcases, luggage tags, credit card
`cases, wallets
`
`U.S. Registration
`No.
`Registration Date
`
`3298621
`
`09/25/2007
`
`Word Mark
`Design Mark
`
`THE PLAYERS
`
`Application Date
`
`10/10/2006
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 024. First use: First Use: 2007/05/01 First Use In Commerce: 2007/05/01
`TOWELS
`
`U.S. Registration
`No.
`Registration Date
`
`2748361
`
`08/05/2003
`
`Word Mark
`
`THE PLAYERS
`
`Application Date
`
`11/14/2001
`
`Foreign Priority
`Date
`
`NONE
`
`
`
`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 041. First use: First Use: 2003/01/01 First Use In Commerce: 2003/01/01
`Organizing and arranging professional golf tournaments
`
`1284645
`
`Application Date
`
`10/28/1981
`
`07/03/1984
`
`Foreign Priority
`Date
`TOURNAMENT PLAYERS CLUB
`
`NONE
`
`NONE
`
`Class 041. First use: First Use: 1980/10/10 First Use In Commerce: 1980/10/10
`Entertainment and Educational Services-Namely, Providing Golf Course and
`Golf Club Facilities, Support Services for Golf Tournaments and Instruction in
`Design and Construction of Facilities for Golf Tournaments
`
`1241244
`
`Application Date
`
`10/28/1981
`
`06/07/1983
`
`Foreign Priority
`Date
`TOURNAMENT PLAYERS CLUB
`
`NONE
`
`NONE
`
`Class 025. First use: First Use: 1980/10/11 First Use In Commerce: 1980/11/12
`Men's and Women's Athletic and Casual Clothing-Namely, Shirts, Sweaters,
`Jackets, Trousers, Neckties and Headwear
`
`2877023
`
`Application Date
`
`08/13/2002
`
`08/24/2004
`
`Foreign Priority
`Date
`THE PLAYERS CHAMPIONSHIP
`
`NONE
`
`NONE
`
`Class 018. First use: First Use: 1987/12/31 First Use In Commerce: 1987/12/31
`All purpose athletic bags, toiletry cases sold empty, luggage, attaché cases,
`tote bags, umbrellas, briefcases, business card cases, luggage tags, wallets,
`credit card cases, key cases, all purpose sports bags, backpacks, briefcase-type
`portfolios, garment bags for travel, handbags, purses
`
`
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`
`1889932
`
`Application Date
`
`09/14/1993
`
`04/18/1995
`
`Foreign Priority
`Date
`THE PLAYERS CHAMPIONSHIP
`
`NONE
`
`NONE
`
`Class 024. First use: First Use: 1987/12/00 First Use In Commerce: 1987/12/00
`golf towels
`Class 028. First use: First Use: 1987/12/00 First Use In Commerce: 1987/12/00
`sporting goods, namely golf club headcovers, golf bag tags, golf ball markers
`and golf balls
`
`1865762
`
`Application Date
`
`09/14/1993
`
`12/06/1994
`
`Foreign Priority
`Date
`THE PLAYERS CHAMPIONSHIP
`
`NONE
`
`NONE
`
`Class 016. First use: First Use: 1987/12/00 First Use In Commerce: 1987/12/00
`paper and paper articles and printed matter; namely, brochures about golf and
`booklets, including programs, media guides and pairing sheets in relation to
`golfing and to organizing and conducting professional golf tournaments
`
`1886083
`
`Application Date
`
`09/14/1993
`
`03/28/1995
`
`Foreign Priority
`Date
`THE PLAYERS CHAMPIONSHIP
`
`NONE
`
`Description of
`
`NONE
`
`
`
`Mark
`Goods/Services
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`
`Class 021. First use: First Use: 1987/12/00 First Use In Commerce: 1987/12/00
`small domestic utensils and containers; namely, porcelain mugs and beverage
`glassware
`
`1864767
`
`Application Date
`
`09/14/1993
`
`11/29/1994
`
`Foreign Priority
`Date
`THE PLAYERS CHAMPIONSHIP
`
`NONE
`
`NONE
`
`Class 025. First use: First Use: 1987/12/00 First Use In Commerce: 1987/12/00
`clothing; namely, men's and women's shirts, sweaters, jackets, pants, socks,
`neckties and headwear
`
`1523862
`
`Application Date
`
`01/21/1988
`
`02/07/1989
`
`Foreign Priority
`Date
`THE PLAYERS CHAMPIONSHIP
`
`NONE
`
`NONE
`
`Class 041. First use: First Use: 1987/12/14 First Use In Commerce: 1987/12/14
`ORGANIZING AND ARRANGING PROFESSIONAL GOLF TOURNAMENTS
`
`3003765
`
`Application Date
`
`02/13/2004
`
`10/04/2005
`
`Foreign Priority
`Date
`TOURNAMENT PLAYERS COURSE
`
`NONE
`
`Description of
`Mark
`
`NONE
`
`
`
`Goods/Services
`
`Class 041. First use: First Use: 1999/02/28 First Use In Commerce: 1999/02/28
`Entertainment services, namely providing golf course and golf club facilities and
`entertainment in the nature of golf tournaments
`
`U.S. Registration
`No.
`Registration Date
`
`1393313
`
`05/13/1986
`
`Application Date
`
`08/19/1983
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`TPC
`
`NONE
`
`Class 025. First use: First Use: 1980/10/11 First Use In Commerce: 1980/12/05
`GOLF GLOVES
`Class 028. First use: First Use: 1980/10/11 First Use In Commerce: 1980/12/05
`SPORTING GOODS NAMELY, GOLF CLUBS, GOLF BAGS, GOLF BAG
`TAGS, GOLF CLUB HEAD COVERS, GOLF BALLS, AND SMALL GOLFERS'
`UTENSILS USED FOR REPAIRING TURF DAMAGED DURING PLAY AND
`MARKING THE LOCATION OF GOLF BALLS ON THE GREEN
`
`U.S. Registration
`No.
`Registration Date
`
`1289142
`
`08/07/1984
`
`Application Date
`
`08/19/1983
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`TPC
`
`NONE
`
`Class 025. First use: First Use: 1980/10/11 First Use In Commerce: 1980/11/12
`Men's and Women's Athletic and Casual Clothing-Namely, Shirts, Sweaters,
`Jackets, Trousers, [Neckties] and Headwear
`
`U.S. Registration
`No.
`Registration Date
`
`3222234
`
`03/27/2007
`
`Word Mark
`Design Mark
`
`PLAYERS CELLARS
`
`Application Date
`
`03/30/2006
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 033. First use: First Use: 2005/09/22 First Use In Commerce: 2005/09/22
`
`
`
`Attachments
`
`wine
`
`78933602#TMSN.jpeg ( 1 page )( bytes )
`78736995#TMSN.jpeg ( 1 page )( bytes )
`77017732#TMSN.jpeg ( 1 page )( bytes )
`77017449#TMSN.jpeg ( 1 page )( bytes )
`77017400#TMSN.jpeg ( 1 page )( bytes )
`76338076#TMSN.gif ( 1 page )( bytes )
`74435123#TMSN.gif ( 1 page )( bytes )
`74435044#TMSN.gif ( 1 page )( bytes )
`74435043#TMSN.gif ( 1 page )( bytes )
`74435042#TMSN.gif ( 1 page )( bytes )
`78367642#TMSN.jpeg ( 1 page )( bytes )
`78849799#TMSN.jpeg ( 1 page )( bytes )
`Document.pdf ( 7 pages )(1413718 bytes )
`
`Certificate of Service
`
`The undersigned hereby certifies that a copy of this paper has been served upon all parties, at their address
`record by First Class Mail on this date.
`
`Signature
`Name
`Date
`
`/Mark D. Passler/
`Mark D. Passler
`12/03/2008
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition No.
`
`Application Ser. No. 77;’428,330
`
`Filed: March 21, 2008
`
`Published: August 5, 2003
`
`)
`)
`)
`)
`
`) )
`
`)
`)
`)
`)
`
`PGA TOUR, INC.
`a Maryland corporation,
`
`Opposer
`
`V-
`
`TPC Operations, LLC,
`a California limited liability company
`
`Applicant
`
`J O
`
`PPOSER’S NOTICE OF OPPOSITION
`
`
`
`PGA Tour, Inc. (“0pposer”), a Maryland corporation, having its principal place of
`
`business at 112 PGA Tour Boulevard, Ponte Vedra Beach, Florida, 32082, believes it will be
`
`damaged by the registration of the trademark shown in Application Serial No. '?'?f428,330 for the
`
`identified goods and hereby opposes that application under the provisions of 15 U.S.C. § 1063.
`
`Application Serial No. 771423530 was filed on March 21, 2008 for the trademark TI--IE
`
`PLAYERS CLUB in connection with "magazine in the field of finance, financial planning,
`
`sports and lifestyle," in International Class 16. The mark was then published for opposition in
`
`the Trademark Oflicfal Gazette on August 5, 2008.
`
`Having been granted extensions of time to oppose up to and including December 3, 2008,
`
`Opposer opposes registration of the above-referenced trademark application, and alleges:
`
`1.
`
`Since as early as 1916, Opposer, its predecessors and their affiliated and
`
`related entities have operated the pre-eminent American professional golf competitions and
`
`exhibitions both in the United States of America and internationally.
`
`{WP55020S;l}
`
`
`
`Notice of Opposition
`PGA Tour, Inc. v. TPC, LLC
`THE PLAYERS CLUB
`Our ref: 8560-17
`
`Page 2
`
`2.
`
`Since long prior to March 21, 2008, Applicant's constructive first use date,
`
`Opposer, its predecessors, and their affiliated and related entities have used marks comprising or
`
`containing the term PLAYERS, alone andfor with other word,
`
`letter or design elements
`
`("0pposer's PLAYERS Marks") in connection with their golf competitions and exhibitions, and
`
`also their related services and luxury merchandise.
`
`3.
`
`Opposer is the owner of U.S. Trademark Registration No. 3,403,532 for
`
`THE PLAYERS and Design for "sporting goods, namely, golf clubs, golf bags, golf gloves, golf
`
`bag tags, golf club headcovers, golf balls, golf ball markers and small golfer's utensils used for
`
`repairing turf damage during play" in International Class 28.
`
`4.
`
`Opposer is the owner of US. Trademark Registration No. 3,270,003 for
`
`THE PLAYERS and Design for "entertainment services in the nature of conducting professional
`
`golf tournaments," in International Class 41.
`
`S.
`
`Opposer is the owner of U.S. Trademark Registration No. 3,419,026 for
`
`THE PLAYERS and Design for "small domestic containers, namely, beverage glassware" in
`
`International Class 21.
`
`6.
`
`Opposer is the owner of US. Trademark Registration No. 3,298,622 for
`
`THE PLAYERS and Design for "golf umbrellas, athletic bags, tote bags, briefcases, luggage
`
`tags, credit card cases, wallets" in International Class 18.
`
`7.
`
`Opposer is the owner of US. Trademark Registration No. 3,298,621 for
`
`THE PLAYERS and Design for "towels“ in International Class 24.
`
`{WI-’550205;l}
`
`
`
`Notice of Opposition
`PGA Tour, Inc. V. TPC, LLC
`THE PLAYERS CLUB
`Our ref: 8560-17
`
`Page 3
`
`8.
`
`Opposer is the owner of U.S. Trademark Registration No. 2,748,361 for
`
`THE PLAYERS for "organizing and arranging professional golf tournaments" in International
`
`Class 41.
`
`9.
`
`Opposer is the owner of U.S. Trademark Registration No. 1,284,645 for
`
`TOURNAMENT PLAYERS CLUB for "ente1“tainrnent and educational services, namely,
`
`providing golf course and golf club facilities, support services for golf tournaments and
`
`instruction in design and construction of facilities for golf tournaments" in International Class
`
`41.
`
`10.
`
`Opposer is the owner of U.S. Trademark Registration No. 1,241,244 for
`
`TOURNAMENT PLAYERS CLUB for “men's and women's athletic and casual clothing,
`
`namely, shirts, sweaters, jackets, trousers, neckties and headwear," in International Class 25.
`
`ll.
`
`Opposer is the owner of U.S. Trademark Registration No. 2,877,023 for
`
`THE PLAYERS CHAMPIONSHIP for "all purpose athletic bags, toiletry cases sold empty,
`
`luggage, attache cases,
`
`tote bags, umbrellas, briefcases, business card cases,
`
`luggage tags,
`
`wallets, credit card cases, key cases, all purpose sports bags, backpacks, briefcase~type
`
`portfolios, garment bags for travel, handbags, purses" in International Class 18.
`
`12.
`
`Opposer is the owner of U.S. Trademark Registration No. 1,889,932 for
`
`THE PLAYERS CHAMPIONSHIP and Design for "golf towels," in International Class 24, and
`
`"sporting goods, namely golf club head covers, golf bag tags, golf ball markers and golf balls" in
`
`International Class 28.
`
`13.
`
`Opposer is the owner of U.S. Trademark Registration No. 1,865,762 for
`
`THE PLAYERS CHAMPIONSHIP and Design for "paper and paper articles and printed matter;
`
`{WPS5(}205;l}
`
`DJ
`
`
`
`Notice of Opposition
`PGA Tour, Inc. v. TPC, LLC
`Tl-IE PLAYERS CLUB
`Our ref: 8560-17
`
`Page 4
`
`namely, brochures about golf and booklets, including programs, media guides and pairing sheets
`
`in relation to golfing and to organizing and conducting professional golf tournaments," in
`
`International Class 16.
`
`14.
`
`Opposer is the owner of U.S. Trademark Registration No. 1,886,083 for
`
`THE PLAYERS CHAMPIONSHIP and Design for "small domestic utensils and containers;
`
`namely, porcelain mugs and beverage glassware" in International Class 21.
`
`15.
`
`Opposer is the owner of U.S. Trademark Registration No. 1,864,161 for
`
`THE PLAYERS CHAMPIONSHIP and Design for "clothing; namely, men's and women's shirts,
`
`sweaters, jackets, pants, socks, neckties and headwear" in International Class 25.
`
`16.
`
`Opposer is the owner of U.S. Trademark Registration No. 1,523,862 for
`
`THE PLAYERS CI-IAMPIONSI-IIP
`
`for
`
`"organizing and
`
`arranging professional golf
`
`toumaments," in International Class 41.
`
`17.
`
`Opposer is the owner of U.S. Trademark Registration No. 3,003,765 for
`
`TOURNAMENT PLAYERS COURSE for "entertainment services, namely providing golf
`
`course and golf club facilities and entertainment
`
`in the nature of golf tournaments," in
`
`International Class 41.
`
`18.
`
`Opposer is the owner of U.S. Trademark Registration No. 1,393,313 for
`
`TPC for "golf gloves" in International Class 25, and for "sporting goods namely, golf clubs, golf
`
`bags, golf bag tags, golf club head covers, golf balls, and small golfers‘ utensils used for
`
`repairing turf damages during play and marking the location of golf balls on the green," in
`
`International Class 28.
`
`{wpssoznsui
`
`
`
`Notice ofOpposition
`PGA Tour, Inc. v. TPC, LLC
`THE PLAYERS CLUB
`Our ref: 8560-1’?
`
`Page 5
`
`19.
`
`Opposer is the owner of U.S. Trademark Registration No. 1,289,142 for
`
`TPC for "men's and women's athletic and casual clothing, namely, shirts, sweaters, jackets,
`
`trousers, [neckties] and headwear," in lntemational Class 25.
`
`20.
`
`Opposer is the owner of U.S. Trademark Registration No. 3,222,234 for
`
`PLAYER CELLARS for "wine" in International Class 33.
`
`21.
`
`As a result of the extensive sales and promotion of its luxury goods and
`
`services bearing or offered in connection with Opposer's PLAYERS Marks, Opposer has built up
`
`highly Valuable goodwill in Opposer's PLAYERS Marks, and said goodwill has become closely
`
`and uniquely identified and associated with Opposer and its unique place in the luxury goods and
`
`services market.
`
`22.
`
`On March 21, 2008, Applicant filed the Application 77f428,330, based on
`
`an intent to use, to register the word mark Tl-IE PLAYERS CLUB for a "magazine in the field of
`
`finance, financial planning, sports and lifestyle" in International Class 16.
`
`23.
`
`Upon information and belief, Opposer did not use the mark THE
`
`PLAYERS CLUB prior to its constructive first use date of March 21, 2008.
`
`24.
`
`The goods covered by the Application are closely related to the goods
`
`offered and services rendered in connection with Opposer's PLAYERS Marks, and are within the
`
`natural zone of expansion of Opposer's business employing 0pposer's PLAYERS Marks.
`
`25.
`
`Applicant's THE PLAYERS CLUB mark so resembles Opposer's
`
`PLAYERS Marks as to be likely, when used in connection with Applicant's goods, to cause
`
`confusion, to cause mistake, and to deceive the trade and public, who are likely to believe that
`
`Applicant's goods have their origin with Opposer and/or that such goods are approved, endorsed
`
`{WP550205;l}
`
`
`
`Notice of'Opposition
`PGA Tour, Inc. V. TPC, LLC
`THE PLAYERS CLUB
`Our ref: 8560-17
`
`Page 6
`
`or sponsored by Opposer or associated in some way with Opposer. Opposer would thereby be
`
`injured by the granting to Applicant of a certificate of registration for Applicant's THE
`
`PLAYERS CLUB mark.
`
`26.
`
`Opposer would be further injured by the granting of a certificate of
`
`registration to Applicant because Applicant's THE PLAYERS CLUB mark would falsely suggest
`
`a connection between Applicant and Opposer.
`
`WHEREI-‘ORE, Opposer believes that it will be damaged by registration of said
`
`mark, and prays that this Opposition be sustained, that Application Serial No. 77/428,330 be
`
`rejected, and that the mark applied for therein be refused registration.
`
`The filing fee for this opposition in the amount of $300.00 is enclosed.
`
`Respectfully submitted
`
`AKERMAN SENTERFITT
`
`Date: December 3, 2008
`
`By:
`
`2
`
`Mark D. Passler
`
`//2/«I
`
`
`
`Jennifer P. Rabin
`222 Lakeview Avenue, 4"‘ Floor
`West Palm Beach, I’ L 33401
`Telephone: (561) 653-5000
`Telefaxz
`(561)653-5333
`
`ATTORNEYS FOR OPPOSER
`
`{WP5S0205;l}
`
`
`
`Notice ofOpposition
`PGA Tour, Inc. \«'. TPC, LLC
`THE PLAYERS CLUB
`Our ref: 8560-17
`
`Page 7
`
`CERTIFICATE OF SERVICE
`
`I HEREBY CERTIFY that a true and complete company of the foregoing OPPOSER’S
`
`NOTICE OF OPPOSITION has been served by mailing said true and complete copy on
`
`December 3, 2008, via First Class Mail, postage prepaid, to:
`
`TPC Operations, LLC
`207 W. Los Angeles, Suite 173
`Moorpark, CA 93021
`UNITED STATES
`
` Kendra Waterman
`
`{WP‘5302U5'.l}



