Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA333561
`ESTTA Tracking number:
`02/22/2010
`
`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
`02/21/2010
`
`2201 E. 6th Street
`Austin, TX 78702
`UNITED STATES
`
`Attorney
`information
`
`Heather A. Dunn, Esq.
`DLA Piper LLP (US)
`555 Mission Street, Suite 2400
`San Francisco, CA 94105-2933
`UNITED STATES
`tmfilings@dlapiper.com, heather.dunn@dlapiper.com,
`dash.mclean@dlapiper.com, jeremy.lane@dlapiper.com Phone:415.836.2557
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`77617826
`02/22/2010
`
`Publication date
`Opposition
`Period Ends
`
`08/25/2009
`02/21/2010
`
`Runyan, Donald W.
`2536 South Brandi Lane
`Yuma, AZ 85364
`UNITED STATES
`Goods/Services Affected by Opposition
`
`Class 010.
`All goods and services in the class are opposed, namely: Adult sexual stimulation aid, namely, penis
`rigidity enhancement device in the nature of an open-cylindrical shaped device which extends over
`the shaft of a penis in order to maintain the shaft of a penis in an erect position
`
`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
`
`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
`
`3716127
`
`11/24/2009
`
`Word Mark
`Design Mark
`
`LIVESTRONG
`
`Application Date
`
`03/25/2008
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 044. First use: First Use: 2003/12/15 First Use In Commerce: 2003/12/15
`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. Registration
`No.
`Registration Date
`
`3719356
`
`12/01/2009
`
`Word Mark
`
`LIVESTRONG
`
`Application Date
`
`03/25/2008
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 035. First use: First Use: 2008/09/17 First Use In Commerce: 2008/09/17
`Providing referrals in the field of matching patients with clinical trials for new
`treatments in the field of cancer
`
`U.S. Application
`No.
`Registration Date
`
`77431116
`
`NONE
`
`Word Mark
`Design Mark
`
`LIVESTRONG
`
`Application Date
`
`03/25/2008
`
`Foreign Priority
`Date
`
`NONE
`
`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. Registration
`No.
`Registration Date
`
`3655696
`
`07/14/2009
`
`Word Mark
`Design Mark
`
`LIVESTRONG.COM
`
`Application Date
`
`06/04/2008
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 044. First use: First Use: 2008/05/27 First Use In Commerce: 2008/05/27
`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
`
`77490649
`
`NONE
`
`Word Mark
`Design Mark
`
`LIVESTRONG.COM
`
`Application Date
`
`06/04/2008
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`
`NONE
`
`

`
`Mark
`Goods/Services
`
`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. Registration
`No.
`Registration Date
`
`3655694
`
`07/14/2009
`
`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: First Use: 2008/09/17 First Use In Commerce: 2008/09/17
`On-line social networking services
`
`U.S. Registration
`No.
`Registration Date
`
`3202553
`
`01/23/2007
`
`Word Mark
`
`LIVESTRONG
`
`Application Date
`
`05/07/2004
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Design Mark
`
`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
`
`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. Registration
`No.
`Registration Date
`
`3655543
`
`07/14/2009
`
`Word Mark
`
`LIVESTRONG
`
`Application Date
`
`03/25/2008
`
`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
`
`NONE
`
`Class 045. First use: First Use: 2008/09/17 First Use In Commerce: 2008/09/17
`Online social networking services
`
`3205197
`
`Application Date
`
`08/05/2005
`
`02/06/2007
`
`Foreign Priority
`Date
`LANCE ARMSTRONG FOUNDATION LIVESTRONG
`
`NONE
`
`NONE
`
`Class 014. First use: First Use: 2004/11/30 First Use In Commerce: 2004/11/30
`Jewelry
`Class 035. First use: First Use: 2005/06/08 First Use In Commerce: 2005/06/08
`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: 2005/02/28 First Use In Commerce: 2005/02/28
`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: 2005/05/16 First Use In Commerce: 2005/05/16
`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: 2005/05/16 First Use In Commerce: 2005/05/16
`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
`
`Word Mark
`Design Mark
`
`3363666
`
`Application Date
`
`05/19/2006
`
`01/01/2008
`
`Foreign Priority
`Date
`LIVESTRONG YOUNG ADULT ALLIANCE
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 035. First use: First Use: 2006/11/10 First Use In Commerce: 2006/11/10
`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 research, delivery of
`patient care, cancer recovery and survival by sponsoring, developing, and
`carrying out community and national programs; charitable services, namely
`organizing and conducting volunteer programs and community service projects
`Class 041. First use: First Use: 2006/11/10 First Use In Commerce: 2006/11/10
`Educational services, namely, organizing and conducting conferences in the
`fields of cancer, cancer recovery and survival
`
`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
`
`3296017
`
`Application Date
`
`08/05/2005
`
`

`
`No.
`Registration Date
`
`Word Mark
`Design Mark
`
`09/25/2007
`
`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
`
`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. Registration
`No.
`Registration Date
`
`3680140
`
`09/08/2009
`
`Word Mark
`
`LIVESTRONG
`
`Application Date
`
`09/20/2006
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 025. First use: First Use: 2007/11/30 First Use In Commerce: 2007/11/30
`Gloves; Jogging pants; Jogging suits; Scarves; Shoes; Track suits; Warm up
`suits
`
`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.
`Registration Date
`
`3126718
`
`08/08/2006
`
`Word Mark
`
`LIVESTRONG
`
`Application Date
`
`08/29/2005
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Design Mark
`
`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. Registration
`No.
`Registration Date
`
`3315119
`
`10/23/2007
`
`Word Mark
`
`LIVESTRONG
`
`Application Date
`
`08/05/2005
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Design Mark
`
`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
`
`Attachments
`
`75821537#TMSN.gif ( 1 page )( bytes )
`77431136#TMSN.jpeg ( 1 page )( bytes )
`77431059#TMSN.jpeg ( 1 page )( bytes )
`77431116#TMSN.jpeg ( 1 page )( bytes )
`77490623#TMSN.jpeg ( 1 page )( bytes )
`77490649#TMSN.jpeg ( 1 page )( bytes )
`77490580#TMSN.jpeg ( 1 page )( bytes )
`76977737#TMSN.gif ( 1 page )( bytes )
`77431086#TMSN.jpeg ( 1 page )( bytes )
`77431149#TMSN.jpeg ( 1 page )( bytes )
`78687069#TMSN.jpeg ( 1 page )( bytes )
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`76591079#TMSN.gif ( 1 page )( bytes )
`76644417#TMSN.gif ( 1 page )( bytes )
`78821024#TMSN.jpeg ( 1 page )( bytes )
`77003373#TMSN.jpeg ( 1 page )( bytes )
`77003313#TMSN.jpeg ( 1 page )( bytes )
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`77003358#TMSN.jpeg ( 1 page )( bytes )
`76644416#TMSN.gif ( 1 page )( bytes )
`LAF v Runyan.pdf ( 13 pages )(380022 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
`
`/Paul A. McLean/
`Paul A. McLean, Esq., DLA Piper LLP (US)
`02/22/2010
`
`

`
`In the Matter of Application Serial No. 77617826
`Published in the Official Gazette on August 25, 2009
`
`Attorney Docket No. 354932-900238
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Lance Armstrong Foundation
`
`Opposition No.
`
`Opposer,
`
`v.
`
`Donald W. Runyan
`
`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
`andlor will be damaged by the registration of Application Serial No. 77617826 for
`INSTASTRONG and hereby opposes the same.
`
`As grounds for opposition, Opposer alleges that:
`
`1.
`
`2.
`
`3.
`
`According to the Trademark Office records, on or about November 19, 2008, Applicant
`Donald W. Runyan (“Applicant”) applied to register INSTASTRONG, which was
`subsequently assigned Application Serial No. 77617826 (“Applicant's Mark") for “adult
`sexual stimulation aid, namely, penis rigidity enhancement device in the nature of an
`open-cylindrical shaped device which extends over the shaft of a penis in order to
`maintain the shaft of a penis in an erect position,” in class 10, based on App|icant’s intent
`to use Applicant’s Mark in commerce forthe aforementioned goods. This application was
`published in the August 25, 2009 edition of the Official Gazette.
`
`On or about September 24, 2009. 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 December 23, 2009.
`
`On or about December 9, 2009, Opposer filed a further 60 day Request for Extension of
`Time to Op.pose Applicants Mark, with Consent, and the time period within which to file an
`opposition was further extended to February 21, 2010. Because February 21, 2010 is a
`Sunday, pursuant to 37 C.F.R. § 2.196, the time period within which to file an opposition is
`extended to Monday, February 22, 2010.
`
`WF.S.T\2l885_627.2
`354932-900233
`
`

`
`in the Matter of Application Serial No. 77617826
`Published in the Officiai Gazette on August 25, 2009
`
`Attorney Docket No. 3549324900238
`
`4.
`
`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:
`
`LIVE LONG, LIVE STRONG
`
`LIVESTRONG
`
`_
`
`2368904
`(Registered)
`
`3716127
`(Registered)
`
`July 18, 2000
`
`November 24,
`2009
`
`42
`
`44
`
`LIVESTRONG
`
`3719356
`(Registered)
`
`December 1,
`2009
`
`LIVESTRONG
`
`77431 116 (Notice March 25, 2008
`of Allowance
`issued)
`
`41
`
`Consulting services in the field of
`personal fitness training
`
`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
`
`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 rnatchingpatients with
`clinical trials for new treatments in
`the field of cancer
`
`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 featurin information on
`
`WEST\2 I 8856272
`354932-900238
`
`2
`
`

`
`In the Matter of Application Serial No. 77617826
`Published in the Official Gazette on August 25, 2009
`
`Attorney Docket No. 354932—900238
`
`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 sportingand cultural
`events
`
`toms, medical conditions,
`
`Providing a website featuring
`information in the field of medical
`T
`
`LIVESTRONG.COM'
`
`3655696
`(Registered)
`
`July 14, 2009
`
`I
`
`3
`
`WES'l'\2l885627.2
`354932-900238
`
`

`
`In the Matter of Application Serial No. 77617826
`Published in the Official Gazette on August 25, 2009
`
`Attorney Docket No. 354932-900238
`
`Trademark
`
`Number
`
`Date of
`
`Reg/App
`
`
` Goods/Services
`
`Class
`
`
`
`
`
`
`
`LIVESTRONG.COM
`
`77490649
`(Notice of
`Allowance issued)
`
`June 4, 200-8
`
`41
`
`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
`
`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
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`-
`
`4
`
`WEST\2I885_627.2
`354932--9oo23s
`
`
`
`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, fimd raising and
`charitable fund raising, charitable
`events, charitable activities,
`advocacy in the fight against
`cancer, health, fitness, nutrition,
`diet, inspirational achievement
`stories, s-ports information, 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, medical
`symptoms, medical conditions,
`
`medical ractice s cialties,
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`

`
`In the Matter of Application Serial No. 77617826
`Published in the Official Gazette on August 25, 2009
`
`Attorney Docket No. 354932-900238
`
`Date of
`
`Reg/App
`
`Class
`
`Goods/Services
`
`
`
`
`
`
`
`medical procedures, medical
`information, he-althy living, diet,
`health enhancement, alternative
`medicine, and prescription and
`over-the—counter dru s
`
`
`
`
`
`Trademark
`
`Number
`
`LIVESTRONGCOM
`
`LIVESTRONG
`
`3655694
`(Reistered)
`3202553
`(Registered)
`
`July 14, 2009
`
`45
`
`January 23, 2007
`
`9-, 25, 4|
`
`On-line social networking services
`
`Clothing articles, namely, shirts,
`jackets, pants, shorts andjerseys,
`and sweatshirts, and pullovers;
`socks; headwear, namely, hats,
`caps, visors
`
`Bicycle helmets
`
`
`
`Educational services, namely,
`organizing and conducting
`conferences in the field of cancer,
`cancer recovery and survival
`
` of health insurance, .short term
`medical insurance, health savings
`
`LIVESTRONG
`
`LIVESTRONG
`
`3520209
`(Registered)
`
`Octoberfizl, 2008
`
`36
`
`Providing a website featuring
`health care insurance and short
`term medical insurance
`
`information; providing a website
`featuring inforrnation in the field
`
`accounts, and finance in the field ‘
`of health care
`
`July 14, 2009
`
`45
`
`Online social networking services
`
`
`
`
`
`
`
`
`
`
`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
`
`
`
`
`
`
`
`
`
`February 6, 2007
`
`
`
`
`
`
`P-roviding research grants-to
`or anizations in the fields of
`
`WES'i'\2l885627.2
`354932-900238
`
`5
`
`3655543
`(Reistered
`3205197
`(Registered)
`
`

`
`In the Matter of Application Serial No. 77617826
`Published in the Official Gazette on August 25, 2009
`
`Attorney Docket No. 354932-900238
`
`Trademark
`
`Number
`
`Reg/App
`
`Class
`
`Goodslservices
`
`Date of
`
`public health, cancer, cancer
`recovery and survival; Charitable
`fiindraising 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
`
`Jewelry
`
`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 research,
`delivery of patient care, cancer
`recovery and survival by
`sponsoring, ‘developing, and
`carrying out community and
`national programs; charitable
`services, namely organizing and
`conductin volunteer ro
`
`LIVESTRONG YOUNG ADULT
`ALLIANCE
`
`3363666
`
`(Registered)
`
`January 1,2003
`
`35, 4]
`
`WBS'l'\2l 8856272
`354932-90023-8
`
`

`
`In the Matter of Application Serial No. 77617826
`Published in the Official Gazette on August 25, 2009
`
`Attorney Docket No. 354932-900238
`
`Trademark
`
`Number
`
`ReglApp
`
`Class
`
`Date of
`
`and community service projects
`
`
` Goods/Services
`
`Educational services, namely,
`organizing and conducting
`conferences in the fields of cancer,
`cancer recove
`and survival
`
`LIVESTRONG
`
`3052284
`(Registered)
`
`January 31, 2006
`
`14, 36
`
`Charitable fiindraising services
`
`Jewelry
`
`
`
`
`
`'
`
`3296017
`September 25,
`(Registered)
`2007
`
`
`
`
`LIVESTRONG and Design
`
`
`
` 3493993
`
`LIVESTRONG
`August 26, 2008
`(Registered)
`
`
`36
`
`36
`
`21
`
`
`
`LIVESTRONG
`
`3680140
`
`September 8-,
`
`LIVESTRONG
`
`3267242
`(Registered)
`
`July 24, 2007
`
`
`warm u suits2
`
`
`
`Charitable fundraising services
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Mutual fund investment and
`brokerage services, investment
`consulting and management;
`financial services, namely, an
`investment security;
`administration and management of
`health savings accounts and
`charitable gift annuities; annuity
`underwriting; insurance
`underwriting in the field of health,
`dental, disability, life, and
`catastrophic event coverage;
`
`insurance administration and
`consultiu
`
`
`Gloves; jogging pants; jogging
`suits; scarves‘; shoes; track suits;
`
`
`
`Ceramic vessels, bowls, plates,
`pots; plates, cups, mugs, bowls,
`tea kettles, tea pots not made of
`recious metals
`
`
`
`LIVESTRONG
`
`_ LIVESTRONG
`
`3126718
`(Registered)
`
`3360223
`
`August 8, 2006
`
`Computers; Notebook computers
`
`
`
`December 25,
`
`
`[2
`
`Collars for ets
`
`WEST\2 I 8856272
`354932-900238
`
`7
`
`

`
`In the Matter of Application Serial No. 77617826
`Published in the Official Gazette on August 25., 2009
`
`Attorney Docket No. 354932-900238
`
`
`
`Trademark
`
`Number
`
`
`
`—K—
`LIVESTRONG and Design
`33151 19
`October 23, 2007
`14
`
`
`Jewelry
`
`(Registered)
`
`
`Date of
`
`Reg/App
`
`Class
`
`Goo-ds/Services
`
`
`
`
`
`5.
`
`6.
`
`7.
`
`8.
`
`The marks identified in Paragraph 4, above, are hereinafter referred to collectively as the
`“Opposer's LIVESTRONG Marks.”
`
`In addition to any rights arising from the registrations for 0pposer’s LIVESTRONG Marks,
`Opposer has, with respect to its goods and services, valid common law rights in the
`trademarks set forth above.
`
`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 valuable assets 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 LEVESTRONG Marks as signifying
`Opposer and as identifying Opposer as the source of goods and services offered under
`the Opposer's LIVESTRONG Marks.
`
`Opposer is also the registered owner of the domain name <livestrong.org>, which is an
`integral part of its business. Opposer's licensee also uses the domain name
`<livestrong.com> in connection with its website for providing information concerning
`medical conditions and diseases, symptoms, treatment options, and in the fields of health
`and fitness. Opposer uses Opposer"s LIVESTRONG Marks extensively on its
`<livestrong.org> web site, and the LIVESTRONG Marks are featured extensively on the
`<liv'estrong.com> web site.
`
`OPPOSER’S REGISTRATIONS IN THE FIELDS OF MEDICAL INFORMATION HEALTH AND
`
`FITNESS
`
`WES'l‘\2l885627.2
`354932-90,0238
`
`8
`
`

`
`in the Matter of Application Serial No. 77617826
`Published in the Official Gazette on August 25, 2009
`
`Attorney Docket No. 354932—900238
`
`9.
`
`Opposer and Opposer’s predecessor in interest have continuously used or used through
`iicensees the mark LIVE LONG, LIVE STRONG since at least as early as November 5,
`1997 to identify consulting services in the field of personal fitness training, which first use
`date in commerce predates Applicant's filing date of November 19, 2008 for its Application
`Serial No. 77617826.
`
`10. Opposer’s predecessor in interest first applied to register the mark
`LIVE LONG, LIVE STRONG (Registration No. 2368904) for consulting services in the field
`of personal fitness training on October 12, 1999, which filing date predates Applicant's
`filing date of November 19, 2008 for its Application Serial No. 77617826.
`
`11. Opposer has continuously used the mark LIVESTRONG since at least as early as
`December 15, 2003 for its website services for providing information in the field of medical
`symptoms, medical conditions, medical practice specialties, medical procedures, and for
`providing information in the field of health, which first use date in commerce predates
`Applicant's filing date of November 19, 2008 for its Application Serial No. 77617826.
`
`12. Opposer first applied to register the mark LIVESTRONG (Registration No. 3716127) for its
`website services for providing information in the field of medical symptoms, medical
`conditions, medical practice specialties, medical procedures, healthy living, diet, health
`enhancement, alternative medicine, prescription and ove.r—the—counter drugs, and nutrition,
`for providing medical information and information in the field of mental health and
`wellness, and for mental health service on March 25, 2008, which filing date predates
`Applicant's filing date of November 19, 2008 for its Application Serial No. 77617826.
`
`13. Opposer first applied to register the mark LIVESTRONG (Registration No. 3719356) for
`"providing referrals in the field of matching patients with clinical trials for new treatments in
`the field of cancer” on March 25, 2008, which filing date predates