Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA280484
`ESTTA Tracking number:
`04/27/2009
`
`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
`
`Lance Armstrong Foundation
`04/26/2009
`
`P.O. Box 161150
`Austin, TX 78716-1150
`UNITED STATES
`
`Correspondence
`information
`
`Heather Angelina Dunn, Esq.
`DLA Piper LLP (US)
`555 Mission Street Suite 2400
`San Francisco, CA 94105-2933
`UNITED STATES
`heather.dunn@dlapiper.com, pamela.anderson@dlapiper.com,
`tmfilings@dlapiper.com Phone:415.836.2557
`Applicant Information
`
`77466425
`04/27/2009
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`Publication date
`Opposition
`Period Ends
`STANDSTRONG CLINICS, LLC
`100 FITNESS WAY
`HOCKESSIN, DE 19707
`UNITED STATES
`Goods/Services Affected by Opposition
`
`10/28/2008
`04/26/2009
`
`Class 041.
`All goods and services in the class are opposed, namely: Health club services, namely, providing
`instruction and equipment in the field of physical exercise; Educational services, namely, conducting
`classes, seminars, workshops and courses in the field of physical exercise and training, fitness, and
`health issues
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`Dilution
`
`Trademark Act section 2(d)
`Trademark Act section 43(c)
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`Registration Date
`
`3202553
`
`01/23/2007
`
`Application Date
`
`05/07/2004
`
`Foreign Priority
`
`NONE
`
`

`
`Word Mark
`Design Mark
`
`LIVESTRONG
`
`Date
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 2006/07/15 First Use In Commerce: 2006/07/15
`Bicycle helmets
`Class 025. First use: First Use: 2005/06/01 First Use In Commerce: 2005/06/01
`Clothing articles, namely, shirts, jackets, pants, shorts and jerseys, and
`sweatshirts, and pullovers; socks; headwear, namely, hats, caps, visors
`Class 041. First use: First Use: 2004/05/31 First Use In Commerce: 2004/05/31
`Educational services, namely, organizing and conducting conferences in the
`field of cancer, cancer recovery and survival
`
`U.S. Registration
`No.
`Registration Date
`
`2368904
`
`07/18/2000
`
`Application Date
`
`10/12/1999
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`
`LIVE LONG, LIVE STRONG
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 042. First use: First Use: 1997/11/05 First Use In Commerce: 1997/11/05
`Consulting services in the field of personal fitness training
`
`U.S. Registration
`No.
`Registration Date
`
`3052284
`
`01/31/2006
`
`Word Mark
`Design Mark
`
`LIVESTRONG
`
`Application Date
`
`05/07/2004
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 014. First use: First Use: 2004/05/03 First Use In Commerce: 2004/05/03
`Jewelry
`Class 036. First use: First Use: 2003/12/15 First Use In Commerce: 2003/12/15
`charitable fundraising services
`
`

`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`
`3324307
`
`Application Date
`
`06/01/2006
`
`10/30/2007
`
`Foreign Priority
`Date
`LANCE ARMSTRONG FOUNDATION
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 036. First use: First Use: 1997/01/00 First Use In Commerce: 1997/01/00
`Charitable fundraising services; providing research grants to organizations in the
`fields of public health, cancer, cancer recovery and survival; providing a website
`via the internet featuring information, comprehensive content and personal
`stories on the subjects of insurance, finances, financial and estate planning
`Class 041. First use: First Use: 1997/01/00 First Use In Commerce: 1997/01/00
`Development and dissemination via the Internet of educational materials of
`others in the field of cancer, cancer recovery and survival; a web site featuring
`personal narrative stories relating to cancer, cancer recovery and survival for
`instructional and entertainment purposes; Educational services, namely,
`organizing and conducting conferences in the fields of cancer, cancer recovery
`and survival; organizing and conducting sporting events to raise funds and
`awareness in the field of cancer, cancer recovery and survival
`Class 044. First use: First Use: 1997/01/00 First Use In Commerce: 1997/01/00
`Providing a website via the Internet featuring medical information in the nature of
`personal stories relating to cancer, cancer recovery and survival
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`
`3205196
`
`Application Date
`
`08/05/2005
`
`02/06/2007
`
`Foreign Priority
`Date
`LANCE ARMSTRONG FOUNDATION
`
`NONE
`
`Description of
`
`NONE
`
`

`
`Mark
`Goods/Services
`
`Class 014. First use: First Use: 2004/05/03 First Use In Commerce: 2004/05/03
`Jewelry
`Class 016. First use: First Use: 2004/05/11 First Use In Commerce: 2004/05/11
`Posters; educational books in the field of public health, cancer, cancer recovery,
`and cancer survivorship
`Class 025. First use: First Use: 2004/06/29 First Use In Commerce: 2004/06/29
`T-shirts and hats
`Class 035. First use: First Use: 2004/06/16 First Use In Commerce: 2004/06/16
`Lobbying services, namely, promoting public health and cancer survivorship
`interests in the fields of politics, legislation and regulation; promoting public
`awareness of public health in the fields of cancer, cancer recovery and survival
`by sponsoring, developing and carrying out community and national programs
`Class 036. First use: First Use: 2004/10/31 First Use In Commerce: 2004/10/31
`Providing research grants to organizations in the fields of public health, cancer,
`cancer recovery and survival; Charitable fundraising services; Providing a web
`site featuring information, comprehensive content and personal stories
`concerning insurance, finances, financial and estate planning in the fields of
`cancer, cancer recovery and survival
`Class 041. First use: First Use: 2004/05/30 First Use In Commerce: 2004/05/30
`Educational services, namely, organizing and conducting conferences in the
`fields of cancer, cancer recovery and survival; providing a web site featuring
`personal narrative stories relating to cancer, cancer recovery and survival for
`instructional and entertainment purposes
`Class 044. First use: First Use: 2004/05/30 First Use In Commerce: 2004/05/30
`Providing a web site featuring medical information, comprehensive content and
`personal stories in the fields of cancer, cancer recovery and survival
`
`U.S. Registration
`No.
`Registration Date
`
`3267242
`
`07/24/2007
`
`Word Mark
`Design Mark
`
`LIVESTRONG
`
`Application Date
`
`09/20/2006
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 021. First use: First Use: 2006/07/01 First Use In Commerce: 2006/07/01
`Ceramic vessels, bowls, plates, pots; plates, cups, mugs, bowls, tea kettles, tea
`pots not made of precious metals
`
`U.S. Registration
`No.
`
`3126718
`
`Application Date
`
`08/29/2005
`
`

`
`Registration Date
`
`08/08/2006
`
`Word Mark
`Design Mark
`
`LIVESTRONG
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 2005/06/30 First Use In Commerce: 2005/06/30
`Computers; Notebook computers
`
`U.S. Registration
`No.
`Registration Date
`
`3360223
`
`12/25/2007
`
`Word Mark
`Design Mark
`
`LIVESTRONG
`
`Application Date
`
`09/20/2006
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 018. First use: First Use: 2006/11/28 First Use In Commerce: 2006/11/28
`Collars for pets
`
`U.S. Application
`No.
`Registration Date
`
`77003373
`
`NONE
`
`Word Mark
`
`LIVESTRONG
`
`Application Date
`
`09/20/2006
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 025. First use:
`Gloves; Jogging pants; Jogging suits; Scarves; Shoes; Track suits; Warm up
`suits
`
`U.S. Registration
`No.
`Registration Date
`
`3493993
`
`08/26/2008
`
`Word Mark
`Design Mark
`
`LIVESTRONG
`
`Application Date
`
`02/22/2006
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 036. First use: First Use: 2006/05/30 First Use In Commerce: 2006/05/30
`Mutual fund investment and brokerage services; investment consulting and
`management; financial services, namely, an investment security; insurance
`underwriting in the field of health, dental, disability, life, and catastrophic event
`coverage; insurance administration and consulting
`
`U.S. Application
`No.
`Registration Date
`
`77431059
`
`NONE
`
`Word Mark
`
`LIVESTRONG
`
`Application Date
`
`03/25/2008
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 035. First use:
`Providing doctor and medical facility referrals services; medical referrals;
`physician referrals; providing referrals to mental health and psychotherapy
`professionals; and referrals in the field of matching patients with clinical trials for
`new treatments in the field of cancer
`
`U.S. Registration
`No.
`Registration Date
`
`3520209
`
`10/21/2008
`
`Word Mark
`Design Mark
`
`LIVESTRONG
`
`Application Date
`
`03/25/2008
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 036. First use: First Use: 2004/04/00 First Use In Commerce: 2004/04/00
`Providing a website featuring health care insurance and short term medical
`insurance information; providing a website featuring information in the field of
`health insurance, short term medical insurance, health savings accounts, and
`finance in the field of health care
`
`U.S. Application
`No.
`Registration Date
`
`77431116
`
`NONE
`
`Word Mark
`
`LIVESTRONG
`
`Application Date
`
`03/25/2008
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 041. First use:
`Health club services, namely, providing instruction and equipment in the field of
`physical exercise; providing fitness and exercise facilities; counseling services in
`the field physical fitness; physical fitness consultation, instruction, and
`conditioning classes; educational services, namely, instruction and training in
`the fields of health, physical fitness, and nutrition; providing information in the
`field of exercise training; providing a web site featuring information on exercise,
`physical fitness, and sports; providing a website featuring information in the field
`of current events and entertainment, prerecorded music, prerecorded musical
`concerts, and video presentations featuring the subjects of cancer awareness,
`cancer education, cancer survivor stories, cancer patient support, personal
`memorials, honors and tributes, fund raising and charitable fund raising,
`charitable events, charitable activities, advocacy in the fight against cancer,
`news shows, sports information, and cultural events information, and featuring
`podcasts in the field of cancer awareness, cancer education, cancer survivor
`stories, cancer patient support, personal memorials, honors and tributes, fund
`raising and charitable fund raising, charitable events, charitable activities,
`advocacy in the fight against cancer, health, fitness, nutrition, diet, inspirational
`achievement stories, sports information, news shows, sports information, and
`cultural events information; on-line publishing of electronic publications; on-line
`journals, namely, blogs in the fields of health, fitness, exercise, current events,
`sports, entertainment, personal opinions on topics of general interest, health
`care insurance, short term medical insurance, health savings accounts, finance
`in the field of health care, medical symptoms, medical conditions, medical
`practice specialties, medical procedures, medical information, healthy living,
`diet, health enhancement, alternative medicine, and prescription and over-
`the-counter drugs; organization of sports events in the field of cycling, walking,
`running, golf; organizing community sporting and cultural events
`
`U.S. Application
`No.
`Registration Date
`
`77431136
`
`NONE
`
`Word Mark
`
`LIVESTRONG
`
`Application Date
`
`03/25/2008
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 044. First use:
`Providing a website featuring information in the field of medical symptoms,
`medical conditions, medical practice specialties, medical procedures, healthy
`living, diet, health enhancement, alternative medicine, prescription and over-
`the-counter drugs, and nutrition; providing a website featuring medical
`information; Providing a web site featuring information in the field of mental
`health and wellness; mental health services
`
`U.S. Application
`No.
`Registration Date
`
`77431149
`
`NONE
`
`Word Mark
`Design Mark
`
`LIVESTRONG
`
`Application Date
`
`03/25/2008
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 045. First use:
`Online social networking services
`
`U.S. Application
`No.
`Registration Date
`
`77490649
`
`NONE
`
`Word Mark
`
`LIVESTRONG.COM
`
`Application Date
`
`06/04/2008
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 041. First use:
`Providing information in the field of exercise training; providing a web site
`featuring information on exercise, physical fitness, and sports; providing a
`website featuring information in the field of current events and entertainment,
`prerecorded music, prerecorded musical concerts, video presentations featuring
`the subjects of cancer awareness, cancer education, cancer survivor stories,
`cancer patient support, personal memorials, honors and tributes, fund raising
`and charitable fund raising, charitable events, charitable activities, advocacy in
`the fight against cancer, health, fitness, nutrition, diet, inspirational achievement
`stories, sports information, news shows, sports information, and cultural events
`information, and featuring podcasts in the field of cancer awareness, cancer
`education, cancer survivor stories, cancer patient support, personal memorials,
`honors and tributes, fund raising and charitable fund raising, charitable events,
`charitable activities, advocacy in the fight against cancer, health, fitness,
`nutrition, diet, inspirational achievement stories, sports information, news shows,
`sports information, and cultural events information; on-line publishing of
`electronic publications; on-line journals, namely, blogs in the fields of health,
`fitness, exercise, current events, sports, entertainment, personal opinions on
`topics of general interest, medical symptoms, medical conditions, medical
`practice specialties, medical procedures, medical information, healthy living,
`diet, health enhancement, alternative medicine, and prescription and over-
`the-counter drugs
`
`U.S. Application
`No.
`Registration Date
`
`77490623
`
`NONE
`
`Word Mark
`Design Mark
`
`LIVESTRONG.COM
`
`Application Date
`
`06/04/2008
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`NONE
`
`

`
`Goods/Services
`
`Class 044. First use:
`providing a website featuring information in the field of medical symptoms,
`medical conditions, medical practice specialties, medical procedures, healthy
`living, diet, health enhancement, alternative medicine, prescription and over-
`the-counter drugs, and nutrition; providing a website featuring medical
`information; Providing a web site featuring information in the field of mental
`health and wellness; mental health services
`
`U.S. Application
`No.
`Registration Date
`
`77490580
`
`NONE
`
`Word Mark
`Design Mark
`
`LIVESTRONG.COM
`
`Application Date
`
`06/04/2008
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 045. First use:
`On-line social networking services
`
`U.S. Registration
`No.
`Registration Date
`
`3315119
`
`10/23/2007
`
`Word Mark
`Design Mark
`
`LIVESTRONG
`
`Application Date
`
`08/05/2005
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`The mark consists of the appearance and three-dimensional design of a rubber
`wristband with the word LIVESTRONG impressed on the band.
`Class 014. First use: First Use: 2004/05/03 First Use In Commerce: 2004/05/03
`Jewelry
`
`U.S. Registration
`No.
`
`3296017
`
`Application Date
`
`08/05/2005
`
`

`
`Registration Date
`
`09/25/2007
`
`Word Mark
`Design Mark
`
`LIVESTRONG
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`The mark consists of the appearance and three-dimensional design of a rubber
`wristband with the word LIVESTRONG impressed on the band.
`Class 036. First use: First Use: 2004/05/03 First Use In Commerce: 2004/05/03
`Charitable fundraising services
`
`Attachments
`
`76977737#TMSN.gif ( 1 page )( bytes )
`75821537#TMSN.gif ( 1 page )( bytes )
`76591079#TMSN.gif ( 1 page )( bytes )
`78897960#TMSN.jpeg ( 1 page )( bytes )
`78687030#TMSN.jpeg ( 1 page )( bytes )
`77003313#TMSN.jpeg ( 1 page )( bytes )
`78702767#TMSN.jpeg ( 1 page )( bytes )
`77003358#TMSN.jpeg ( 1 page )( bytes )
`77003373#TMSN.jpeg ( 1 page )( bytes )
`78821024#TMSN.jpeg ( 1 page )( bytes )
`77431059#TMSN.jpeg ( 1 page )( bytes )
`77431086#TMSN.jpeg ( 1 page )( bytes )
`77431116#TMSN.jpeg ( 1 page )( bytes )
`77431136#TMSN.jpeg ( 1 page )( bytes )
`77431149#TMSN.jpeg ( 1 page )( bytes )
`77490649#TMSN.jpeg ( 1 page )( bytes )
`77490623#TMSN.jpeg ( 1 page )( bytes )
`77490580#TMSN.jpeg ( 1 page )( bytes )
`76644416#TMSN.gif ( 1 page )( bytes )
`76644417#TMSN.gif ( 1 page )( bytes )
`StandStrong Clinics.pdf ( 13 pages )(6066945 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
`
`/Heather Angelina Dunn/
`Heather Angelina Dunn, Esq.
`04/27/2009
`
`

`
`In the Matter of Application Serial No. 77466425
`Published in the Oflfzcial Gazette on October 28, 2008
`
`Attorney Docket No. 354932-900226
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Lance Armstrong Foundation
`
`Opposition No.
`
`Opposer,
`
`V.
`
`StandStrong Clinics LLC
`
`Applicant.
`
`
`
`NOTICE OF OPPOSITION
`
`Opposer, Lance Armstrong Foundation, a Texas nonprofit corporation, having its principal place
`of business at 2201 E 6th Street, Austin, Texas 78702 (“Opposer”) believes that it has been
`and/or will be damaged by the registration of Application Serial No. 77466425 for the following
`mark and hereby opposes the same.
`
`S1‘a’ndstrc‘5'i'i'§
`fsmeugth ~ Bslam E! - |nm.>pend4:n(.e
`
`(the “StandStrong Mark”)
`
`As grounds for opposition, Opposer alleges that:
`
`1.
`
`According to the Trademark Office records, on or about May 6, 2008, Applicant
`StandStrong Clinics LLC (formerly Eastern Athletic Clubs Realty, LLC) (“Applicant”)
`applied to register the StandStrong Mark, which was subsequently assigned Application
`Serial No. 77466425 (“Applicant’s Mark”) for “Health club services, namely, providing
`instruction and equipment in the field of physical exercise; Educational services, namely,
`conducting classes, seminars, workshops and courses in the field of physical exercise and
`training, fitness, and health issues,” in class 41, based on Applicant’s intent to use
`Applicant’s Mark in commerce for the aforementioned services. This application was
`published in the October 28, 2008 edition of the Ofzzcial Gazette.
`
`WEST\2 17049562
`
`

`
`In the Matter of Application Serial No. 77466425
`Published in the 0[Z1cial Gazette on October 28, 2008
`
`Attorney Docket No. 354932-900226
`
`2.
`
`3.
`
`4.
`
`On or about November 26, 2008, Opposer filed a First 90 Day Request for Extension of
`Time to Oppose Applicant’s Mark, and the time period within which to file an opposition
`was extended to February 25, 2009.
`
`On or about February 25, 2009, Opposer filed a further 60 day Request for Extension of
`Time to Oppose Applicant’s Mark, with Consent, and the time period within which to file
`an opposition was further extended to April 26, 2009.
`
`Opposer is the owner of the following trademarks and trade dress, for which it has
`registrations or pending applications before the U.S. Patent and Trademark Office:
`
`Trademark
`
`Number
`
`Reg/App
`
`Class
`
`Dat of
`
`LIVESTRONG
`
`3202553
`(Registered)
`
`January 23, 2007
`
`9, 25, 41
`
`
`
`Goods/Services
`
`Educational services, namely,
`organizing and conducting
`conferences in the field of cancer,
`cancer recovery and survival
`
`Bicycle helmets
`
`Clothing articles, namely, shirts,
`jackets, pants, shorts and jerseys,
`and sweatshirts, and pullovers;
`socks; headwear, namely, hats,
`caps, visors
`
`LIVE LONG, LIVE STRONG
`
`LIVESTRONG
`
`2368904
`(Registered)
`
`’
`
`3052284
`(Registered)
`
`7
`
`July 18, 2000
`
`42
`
`January 31, 2006
`
`14, 36
`
`Consulting services in the field of
`personal fitness training
`
`Charitable fundraising services
`
`
`
`Jewelry
`
`36, 41, 44 Charitable fundraising services;
`providing research grants to
`organizations in the fields of
`public health, cancer, cancer
`recovery and survival; providing a
`website via the internet featuring
`information, comprehensive
`content and personal stories on the
`subjects of insurance, finances,
`financial and estate planning
`
`LANCE ARMSTRONG
`FOUNDATION
`
`3324307
`(Registered)
`
`October 30, 2007
`
`
`
`WEST\2l704956.2
`
`2
`
`

`
`In the Matter of Application Seria1No. 77466425
`Published in the ()(Zzcz'al Gazette on October 28, 2008
`
`Attorney Docket No. 354932-900226
`
`Date of
`
`Reg/App
`
`
`Goods/Services
`
`
`
`Development and dissemination
`via the Internet of educational
`materials of others in the field of
`
`
`
`cancer, cancer recovery and
`survival; a web site featuring
`personal narrative stories relating
`to cancer, cancer recovery and
`survival for instructional and
`
`entertainment purposes;
`Educational services, namely,
`organizing and conducting
`conferences in the fields of cancer,
`cancer recovery and survival;
`organizing and conducting
`sporting events to raise funds and
`awareness in the field of cancer,
`cancer recovery and survival
`
`Providing a website via the
`Internet featuring medical
`information in the nature of
`
`personal stories relating to cancer,
`cancer recovery and survival
`
`
`
`
`
`February 6, 2007
`
`Jewelry
`
`25, 35,
`36, 41,
`and 44
`
`
`
`Posters; educational books in the
`field of public health, cancer,
`cancer recovery, and cancer
`survivorship
`
`T—shirts and hats
`
`Lobbying services, namely,
`promoting public health and
`cancer survivorship interests in the
`fields of politics, legislation and
`regulation; promoting public
`awareness of public health in the
`fields of cancer, cancer recovery
`and survival by sponsoring,
`developing and carrying out
`community and national programs
`
`Trademark
`
`Number
`
`3205196
`(Registered)
`
`4"?"
`/\/w
`E ARMSTRON
`N o A T 1
`
`CU
`
`AN
`
`WEST\2 1 7049562
`
`

`
`In the Matter of Application Serial No. 77466425
`Published in the Ofzzcial Gazette on October 28, 2008
`
`Attorney Docket No. 354932-900226
`
`Trademark
`
`Number
`
`Reg/App
`
`Class
`
`GoodslServices
`
`Date of
`
`Providing research grants to
`organizations in the fields of
`public health, cancer, cancer
`recovery and survival; Charitable
`fundraising services; Providing a
`web site featuring information,
`comprehensive content and
`personal stories concerning
`insurance, finances, financial and
`estate planning in the fields of
`cancer, cancer recovery and
`survival
`
`Educational services, namely,
`organizing and conducting
`conferences in the fields of cancer,
`cancer recovery and survival;
`providing a web site featuring
`personal narrative stories relating
`to cancer, cancer recovery and
`survival for instructional and
`
`entertainment purposes
`
`Providing a web site featuring
`medical information,
`comprehensive content and
`personal stories in the fields of
`cancer, cancer recovery and
`survival
`
`
`
`
`3267242
`(Registered)
`
`July 24, 2007
`
`August 8, 2006
`
`
`
`December 25,
`2007
`September 20,
`
`2006
`
`Ceramic vessels, bowls, plates,
`pots; plates, cups, mugs, bowls,
`tea kettles, tea pots not made of
`precious metals
`Computers; Notebook computers
`
`
`
`Collars for pets
`
`Gloves; jogging pants; jogging
`suits; scarves; shoes; track suits;
`warm up suits
`Mutual fund investment and
`
`LIVESTRONG
`
`LIVESTRONG
`
`LIVESTRONG
`
`LIVESTRONG
`
`LIVESTRONG
`
`L_
`
`3126718
`(Registered)
`3360223
`(Regflred)
`77003373
`(pending)
`
`3493 993
`(Registered)
`
`
`
`
`brokerage services, investment
`
`
`
`
`
`August 26, 2008
`
`consulting and manaement
`
`WEST\2 I 704956.2
`
`4
`
`

`
`In the Matter of Application Serial No. 77466425
`Published in the Official Gazette on October 28, 2008
`
`Attorney Docket No. 354932-900226
`
`Trademark
`
`Number
`
`Reg/App
`
`Class
`
`Date of
`
`Goods/Services
`
`insurance administration and
`
`financial services, namely, an
`investment security;
`administration and management of
`health savings accounts and
`charitable gift annuities; annuity
`underwriting; insurance
`underwriting in the field ofhealth,
`dental, disability, life, and
`catastrophic event coverage;
`
`consulting
`Providing doctor and medical
`facility referrals services; medical
`referrals; physician referrals;
`providing referrals to mental
`health and psychotherapy
`professionals; and referrals in the
`field of matching patients with
`clinical trials for new treatments in
`the field of cancer
`
`Providing a website featuring
`health care insurance and short
`term medical insurance
`
`information; providing a website
`featuring information in the field
`of health insurance, short term
`medical insurance, health savings
`accounts, and finance in the field
`of health care
`Health club services, namely,
`providing instruction and
`equipment in the field of physical
`exercise; providing fitness and
`exercise facilities; counseling
`services in the field physical
`fitness; physical fitness
`consultation, instruction, and
`conditioning classes; educational
`services, namely, instruction and
`training in the fields of health,
`physical fitness, and nutrition;
`providing information in the field
`of exercise training; providing a
`web site featuring information on
`
`LIVESTRONG
`
`77431059
`(pending)
`
`March 25, 2008
`
`35
`
`LIVESTRONG
`
`3520209
`(Registered)
`
`October 21, 2008
`
`36
`
`7
`
`LIVESTRONG
`
`77431116
`(pending)
`
`March 25, 2008
`
`41
`
`WEST\2l704956.2
`
`5
`
`

`
`In the Matter of Application Serial No. 77466425
`Published in the OZZZCIUZ Gazette on October 28, 2008
`
`Attorney Docket No. 354932-900226
`
`Trademark
`
`Number
`
`Reg/App
`
`Class
`
`Goods/Services
`
`Date of
`
`exercise, physical fitness, and
`sports; providing a website
`featuring information in the field
`of current events and
`
`entertainment, and featuring
`podcasts and prerecorded music,
`prerecorded musical concerts,
`video presentations featuring the
`subjects of cancer awareness,
`cancer education, cancer survivor
`stories, cancer patient support,
`personal memorials, honors and
`tributes, fund raising and
`charitable fund raising, charitable
`events, charitable activities,
`advocacy in the fight against
`cancer, news shows, sports
`information, cultural events
`information; on-line publishing of
`electronic publications; on-line
`journals, namely, blogs in the
`fields of health, fitness, exercise,
`current events, sports,
`entertainment, personal opinions
`on topics of general interest,
`health care insurance, short term
`medical insurance, health savings
`accounts, finance in the field of
`health care, medical symptoms,
`medical conditions, medical
`practice specialties, medical
`procedures, medical information,
`healthy living, diet, health
`enhancement, alternative
`medicine, and prescription and
`over-the—counter drugs;
`organization of sports events in
`the field of cycling, walking,
`running, golf; organizing
`community sporting and cultural
`events
`
`Providing a website featuring
`information in the field of medical
`
`symptoms, medical conditions,
`
`LIVESTRONG
`
`77431136
`
`(pending)
`
`March 25, 2008
`
`44
`
`Wl£ST\2l704956.2
`
`6
`
`

`
`In the Matter of Application Serial No. 77466425
`Published in the Oflzcial Gazette on October 28, 2008
`
`Attorney Docket No. 354932-900226
`
`Trademark
`
`Number
`
`Date of
`
`Reg/App
`
`Class
`
`LIVESTRONG
`
`LlVESTRONG.COM
`
`7743 1 149
`
`(pending)
`77490649
`
`(pending)
`
`March 25, 2008
`
`June 4, 2008
`
`45
`
`41
`
`WF.ST\2 l 704956.2
`
`Goods/Services
`
`services
`
`medical practice specialties,
`medical procedures, healthy
`living, diet, health enhancement,
`alternative medicine, prescription
`and over-the—counter drugs, and
`nutrition; providing a website
`featuring medical information;
`Providing a web site featuring
`information in the field of mental
`
`health and wellness; mental health
`
`Online social networking services
`
`Providing information in the field
`of exercise training; providing a
`web site featuring information on
`exercise, physical fitness, and
`sports; providing a website
`featuring information in the field
`of current events and
`
`entertainment, and featuring
`podcasts, prerecorded music,
`prerecorded musical concerts,
`video presentations featuring the
`subjects of cancer awareness,
`cancer education, cancer survivor
`stories, cancer patient support,
`personal memorials, honors and
`tributes, fund raising and
`charitable fund raising, charitable
`events, charitable activities,
`advocacy in the fight against
`cancer, health, fitness, nutrition,
`. diet, inspirational achievement
`stories, sports information, news
`shows, sports information, cultural
`events information; on-line
`publishing of electronic
`publications; on-linejournals,
`namely, blogs in the fields of
`health, fitness, exercise, current
`events, sports, entertainment,
`personal opinions on topics of
`general interest, medical
`
`

`
`In the Matter of Application Serial No. 77466425
`Published in the Official Gazette on October 28, 2008
`
`Attorney Docket No. 354932-900226
`
`Trademark
`
`Number
`
`Date of
`
`Reg/App
`
`Class
`
`LIVESTRONG.COM
`
`77490623
`
`(pending)
`
`June 4, 2008
`
`44
`
`Goods/Services J
`
`symptoms, medical conditions,
`medical practice specialties,
`medical procedures, medical
`information, healthy living, diet,
`health enhancement, alternative
`medicine, and prescription and
`
`over-the—counter drugs
`
`Providing a website featuring
`information in the field of medica
`
`_’I
`
`symptoms, medical conditions,
`medical practice specialties,
`medical procedures, healthy
`living, diet, health enhancement,
`alternative medicine, prescription
`and over-the—counter drugs, and
`nutrition; providing a website
`featuring medical information;
`Providing a web site featuring
`information in the field of mental
`health and wellness; mental health
`services
`
`l__
`LIVESTRONG.COM
`
`LIVESTRONG and Design
`
`‘
`
`774905 80
`
`(pending)
`33151 19
`
`(Registered)
`
`June 4, 2008
`
`45
`
`On—line social networking services
`
`October 23, 2007
`
`14
`
`Jewelry
`
`LIVESTRONG and Design
`
`3296017
`
`(Registered)
`
`September 25,
`2007
`
`36
`
`Charitable fundraising services
`
`‘
`
`WEST\2 1 7049562
`
`

`
`In the Matter of Application Serial No. 77466425
`Published in the Ofzzcial Gazette on October 28, 2008
`
`Attorney Docket No. 354932-900226
`
`5.
`
`In addition to the above-referenced trademark registrations and pending applications,
`Opposer is the owner of the following stylized trademarks, in which it has common law
`rights arising out of its nationwide use since as early as 2004:
`
`uvesrnoua LWESTRONG”
`
`L l V E S T R O N G"
`mime:-. ARMs"r'Rom; sounmmon
`
`(the “Stylized LIVESTRONG Marks”).
`
`6.
`
`7.
`
`8.
`
`9.
`
`Opposer is the owner of distinctive trade dress that includes the color yellow used in
`connection with Opposer’s goods and services, including the color yellow used with
`Opposer’s mark LIVESTRONG, in which it has registrations and/or common law rights
`arising out of its use since as early as March 20, 2004.
`
`The marks identified in Paragraph 4 and 6 above are hereinafter referred to as the
`“Opposer’s LIVESTRONG Marks.”
`
`Opposer has extensively advertised and marketed its goods and services and has created
`widespread goodwill under the LIVESTRONG Marks throughout the United States.
`Opposer’s LIVESTRONG Marks have become a valuable asset of Opposer and a principal
`symbol of its extensive goodwill. By reason of widespread use of the marks, the trade and
`purchasing public have come to recognize Opposer’s LIVESTRONG Marks as signifying
`Opposer and as identifying Opposer as the source of goods and services offered under the
`Opposer’s LIVESTRONG Marks.
`
`Opposer owns federal registrations and pending federal applications to register the
`LIVESTRONG Marks and/or common law rights to the LIVESTRONG marks for a wide
`variety of goods and services including but not limited to: educational services, namely,
`organizing and conducting conferences in the fields of cancer, cancer recovery and
`survival; educational materials concerning health issues; public awareness services
`concerning health issues; consulting services in the field of personal fitness training; fitness
`club services; conducting fitness and fundraising events; sports and fitness clothing and
`accessories; providing research grants in the field of public health; charitable fundraising
`services; and providing a web site featuring information relating to fitness and health
`issues.
`
`10. Opposer is also the registered owner of the domain name <livestrong.org>, which is an
`integral part of its business, and the domain names <livestrong.com> and <livestrong.net>,
`which Opposer uses in connection with its business. Opposer’s licensee also uses the
`
`WEST\2l704956.2
`
`9
`
`

`
`In the Matter of Application Serial No. 77466425
`Published in the Ofzzcial Gazette on October 28, 2008
`
`Attorney Docket No. 354932—900226
`
`ll.
`
`12.
`
`13.
`
`domain name <live