Trademark Trial and Appeal Board Electronic Filing System. htfQJ/estta.usQto.gov
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`Notice is hereby given that the following party opposes registration of the indicated application.
`
`Notice of Opposition
`
`Opposer Information
`
`Name
`
`Gildan Activewear SRL
`
`Barbados
`
`Address
`
`Attorney
`information
`
`Newton
`Christ Church, BB 17047
`BARBADOS
`
`Beth M. Goldman and Betsy Wang Lee
`Orrick, Herrington & Sutcliffe LLP
`405 Howard Street
`San Francisco, CA 94105
`UNITED STATES
`
`ipprosecutionsf@orrick.com, b|ee@orrick.com Phone:415—773-5700
`AUX
`
`Applicant Information
`
`Application No
`
`79135264
`
`Publication date
`
`02/11/2014
`
`Opposition Filing
`Date
`
`02/20/2014
`
`Opposition
`Period Ends
`
`03/13/2014
`
`Applicant
`
`Globe International Nominees Pty Ltd
`1 Fennell Street
`AUX
`
`Goods/Services Affected by Opposition
`
`Class 009. First Use: 0 First Use In Commerce: 0
`
`
`
`All goods and services in the class are opposed, namely: Articles of protective clothing for wear for
`protection against accident or injury for use in skateboarding, surfing, skiing, snowboarding, car
`racing, motocross, motorcycling, bicycling, motorsports, water sports, physical activities, extreme
`sports and workers, and water ski safety vests; clothing for protection against accidents; blast
`resistant clothingand garments; insulated clothing for protection against accident or injury; protective
`clothing especially made for usein laboratories, footwear and shoes forprotection against accidents;
`articles of protective footwear for wear for protection against accident or injury for use in
`skateboarding, surfing, skiing, snowboarding, car racing, motocross, motorcycling, bicycling,
`motorsports, water sports, physical activities, extreme sports and workers; articles of protective
`headwear for wear for protection against accident or injury for use in skateboarding, surfing, skiing,
`snowboarding, car racing, motocross, motorcycling, bicycling, motorsports, water sports, physical
`activities, extreme sports and workers, clothing for protection against accidents; protective clothing
`for workers, helmets, and eyewear; eyewear, namely, eye covers for protective purposes, goggles,
`safety eyewear, sports eyewear, protective eyewear and component parts thereof, sunglasses,
`eyeglasses; protective and safety helmets, protective helmets for sports; protective sports helmets,
`chin straps, face masks, jaw pads and eye shields; protective face-shields for protective helmets;
`sports helmets; safety helmets; gloves for protection against accidents; support belts for workers;
`elbow pads, knee pads and shin guards for workers, reflective and illuminated clothing for safety
`purposes, clothing for protection against accidents, irradiation and fire, protective gloves for industrial
`
`Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA588465
`ESTTA Tracking number:
`02/20/2014
`
`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
`
`Gildan Activewear SRL
`SRL
`Newton
`Christ Church, BB 17047
`BARBADOS
`
`Citizenship
`
`Barbados
`
`Attorney
`information
`
`Beth M. Goldman and Betsy Wang Lee
`Orrick, Herrington & Sutcliffe LLP
`405 Howard Street
`San Francisco, CA 94105
`UNITED STATES
`ipprosecutionsf@orrick.com, blee@orrick.com Phone:415-773-5700
`Applicant Information
`
`79135264
`02/20/2014
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`Publication date
`Opposition
`Period Ends
`Globe International Nominees Pty Ltd
`1 Fennell Street
`AUX
`AUX
`Goods/Services Affected by Opposition
`
`02/11/2014
`03/13/2014
`
`Class 009. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Articles of protective clothing for wear for
`protection against accident or injury for use in skateboarding, surfing, skiing, snowboarding, car
`racing, motocross, motorcycling, bicycling, motorsports, water sports, physical activities, extreme
`sports and workers, and water ski safety vests; clothing for protection against accidents; blast
`resistant clothingand garments; insulated clothing for protection against accident or injury; protective
`clothing especially made for usein laboratories, footwear and shoes forprotection against accidents;
`articles of protective footwear for wear for protection against accident or injury for use in
`skateboarding, surfing, skiing, snowboarding, car racing, motocross, motorcycling, bicycling,
`motorsports, water sports, physical activities, extreme sports and workers; articles of protective
`headwear for wear for protection against accident or injury for use in skateboarding, surfing, skiing,
`snowboarding, car racing, motocross, motorcycling, bicycling, motorsports, water sports, physical
`activities, extreme sports and workers, clothing for protection against accidents; protective clothing
`for workers, helmets, and eyewear; eyewear, namely, eye covers for protective purposes, goggles,
`safety eyewear, sports eyewear, protective eyewear and component parts thereof, sunglasses,
`eyeglasses; protective and safety helmets, protective helmets for sports; protective sports helmets,
`chin straps, face masks, jaw pads and eye shields; protective face-shields for protective helmets;
`sports helmets; safety helmets; gloves for protection against accidents; support belts for workers;
`elbow pads, knee pads and shin guards for workers, reflective and illuminated clothing for safety
`purposes, clothing for protection against accidents, irradiation and fire, protective gloves for industrial
`
`

`
`use, protective head guards for industrial purposes, protective industrial boots, protective industrial
`shoes, protective work gloves, reflective and illuminated clothing for safety purposes, clothing for
`protection against chemicals
`Class 018. First Use: 0 First Use In Commerce: 0
`
`
`
`All goods and services in the class are opposed, namely: Bags, namely, all purpose sports bags, all-
`purpose athletic bags, a||—purpose carrying bags, athletic bags, book bags, bags for sports clothing,
`bags for sports, beach bags, book bags, carry-on bags,gym bags, overnight bags, school bags, travel
`bags; backpacks; suitcases; trunks and travelling bags; purses; wallets; satchels, brief cases; attache
`cases; key cases; umbrellas; leather and imitation leather; leather and imitation leatherbackpacks,
`purses, attache cases, key cases, key chains, wallets, satchels, brief cases, leather cases, credit
`card cases, document cases, overnight cases, sports bags, tool bags sold empty
`Class 025. First Use: 0 First Use In Commerce: 0
`
`All goods and services in the class are opposed, namely: Clothing, namely, tops, bottoms, t-shirts,
`shirts, sweatshirts, pants, beachwear, loungewear, jackets, pullovers, ski wear, surf wear, swim wear;
`painter's pants, carpenter's pants, overalls, coveralls, rain wear, sun protective clothing, namely, tops
`and bottoms, |ight—ref|ecting jackets; footwear; headgear, namely, headwear; accessories in this
`class, namely, belts, scarves, gloves, neckties, socks, headbands, fitted shoe or boot covering to
`protect the shoes or boots fromwater or other damage
`
`Grounds for Opposition
`
`Marks Cited by Opposer as Basis for Opposition
`
`Trademark Act section 2<d>
`
`U.S. Registration
`No.
`
`783710
`
`Registration Date
`
`01/19/1965
`
`Word Mark
`
`ANVIL
`
`Design Mark
`
`Description of
`Mark
`
`Application Date
`
`04/13/1964
`
`Foreign Priority
`Date
`
`Goods/Services
`
`Class 025. First use: First Use: 1910/05/29 First Use In Commerce: 1910/05/29
`
`MEN'S AND BOYS‘ SHIRTS, [ SHORTS, PANTS, COATS, JACKETS,
`OVERALLS, AND DUNGAREES]
`
`U.S. Registration
`No.
`
`903069
`
`Registration Date
`
`11/24/1970
`
`Word Mark
`
`ANVIL
`
`Design Mark
`
`Description of
`Mark
`
`Application Date
`
`05/25/1970
`
`Foreign Priority
`Date
`
`Goods/Services
`
`Class 025. First use: First Use: 1910/05/29 First Use In Commerce: 1910/05/29
`
`MEN'S, WOMEN'S, BOYS‘, GIRLS‘ AND CHILDREN'S [ OVERALLS,
`DUNGAREES, ] SHIRTS [ ,SHORTS, PANTS, COATS, JACKETS, AND
`VESTS, AND WOMEN'S AND GIRLS‘ SKIRTS]
`
`U.S. Registration
`No.
`
`1659008
`
`Registration Date
`
`10/01/1991
`
`Application Date
`
`11/16/1990
`
`Foreign Priority
`Date
`
`use, protective head guards for industrial purposes, protective industrial boots, protective industrial
`shoes, protective work gloves, reflective and illuminated clothing for safety purposes, clothing for
`protection against chemicals
`Class 018. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Bags, namely, all purpose sports bags, all-
`purpose athletic bags, all-purpose carrying bags, athletic bags, book bags, bags for sports clothing,
`bags for sports, beach bags, book bags, carry-on bags,gym bags, overnight bags, school bags, travel
`bags; backpacks; suitcases; trunks and travelling bags; purses; wallets; satchels, brief cases; attache
`cases; key cases; umbrellas; leather and imitation leather; leather and imitation leatherbackpacks,
`purses, attache cases, key cases, key chains, wallets, satchels, brief cases, leather cases, credit
`card cases, document cases, overnight cases, sports bags, tool bags sold empty
`Class 025. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Clothing, namely, tops, bottoms, t-shirts,
`shirts, sweatshirts, pants, beachwear, loungewear, jackets, pullovers, ski wear, surf wear, swim wear;
`painter's pants, carpenter's pants, overalls, coveralls, rain wear, sun protective clothing, namely, tops
`and bottoms, light-reflecting jackets; footwear; headgear, namely, headwear; accessories in this
`class, namely, belts, scarves, gloves, neckties, socks, headbands, fitted shoe or boot covering to
`protect the shoes or boots fromwater or other damage
`
`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
`
`783710
`
`01/19/1965
`
`Application Date
`
`04/13/1964
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`ANVIL
`
`NONE
`
`Class 025. First use: First Use: 1910/05/29 First Use In Commerce: 1910/05/29
`MEN'S AND BOYS' SHIRTS, [ SHORTS, PANTS, COATS, JACKETS,
`OVERALLS, AND DUNGAREES ]
`
`U.S. Registration
`No.
`Registration Date
`
`903069
`
`11/24/1970
`
`Application Date
`
`05/25/1970
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`ANVIL
`
`NONE
`
`Class 025. First use: First Use: 1910/05/29 First Use In Commerce: 1910/05/29
`MEN'S, WOMEN'S, BOYS', GIRLS' AND CHILDREN'S [ OVERALLS,
`DUNGAREES, ] SHIRTS [ ,SHORTS, PANTS, COATS, JACKETS, AND
`VESTS, AND WOMEN'S AND GIRLS' SKIRTS ]
`
`U.S. Registration
`No.
`Registration Date
`
`1659008
`
`10/01/1991
`
`Application Date
`
`11/16/1990
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`Class 025. First use: First Use: 1977/00/00 First Use In Commerce: 1977/00/00
`
`tank top shirts, sweat shirts [and knitted dresses]
`
`U.S. Registration
`.°
`
`2418031
`
`Registration Date
`
`01/02/2001
`
`Word Mark
`
`ANVIL
`
`Design Mark
`
`Application Date
`
`07/24/1998
`
`Foreign Priority
`Date
`
`Description of
`Mark
`
`Goods/Services
`
`Class 025. First use: First Use: 2000/05/26 First Use In Commerce: 2000/05/26
`
`pants for women, men and children
`
`U.S. Registration
`
`2893048
`
`Application Date
`
`10/30/2003
`
`Registration Date
`
`10/12/2004
`
`Word Mark
`
`ANVIL
`
`Design Mark
`
`Foreign Priority
`Date
`
`Description of
`Mark
`
`The mark consists of the word ANVIL in script.
`
`Goods/Services
`
`Class 025. First use: First Use: 2003/08/00 First Use In Commerce: 2003/08/00
`
`Shirts and shorts
`
`U.S. Registration
`No.
`
`3863723
`
`Registration Date
`
`10/19/2010
`
`Word Mark
`
`ANVIL
`
`Application Date
`
`03/10/2010
`
`Foreign Priority
`Date
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`ANVIL
`
`NONE
`
`Class 025. First use: First Use: 1977/00/00 First Use In Commerce: 1977/00/00
`tank top shirts, sweat shirts [ and knitted dresses ]
`
`U.S. Registration
`No.
`Registration Date
`
`2418031
`
`01/02/2001
`
`Word Mark
`Design Mark
`
`ANVIL
`
`Application Date
`
`07/24/1998
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 025. First use: First Use: 2000/05/26 First Use In Commerce: 2000/05/26
`pants for women, men and children
`
`U.S. Registration
`No.
`Registration Date
`
`2893048
`
`10/12/2004
`
`Word Mark
`Design Mark
`
`ANVIL
`
`Application Date
`
`10/30/2003
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`The mark consists of the word ANVIL in script.
`
`Class 025. First use: First Use: 2003/08/00 First Use In Commerce: 2003/08/00
`Shirts and shorts
`
`U.S. Registration
`No.
`Registration Date
`
`3863723
`
`10/19/2010
`
`Word Mark
`
`ANVIL
`
`Application Date
`
`03/10/2010
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`Class 025. First use: First Use: 1910/00/00 First Use In Commerce: 1910/00/00
`
`Clothing, namely, shirts, t—shirts; short-sleeved and long-sleeved t—shirts; polo
`shirts; sweatshirts; hooded sweatshirts; robes; fleece pullovers; sport shirts;
`headwear, caps, visors; shorts; turtlenecks
`
`U.S. Registration
`
`78371 1
`
`Application Date
`
`04/13/1964
`
`Registration Date
`
`01/19/1965
`
`Foreign Priority
`Date
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`Class 025. First use: First Use: 1935/00/00 First Use In Commerce: 1935/00/00
`
`MEN'S AND BOYS‘ SHIRTS, [ SHORTS, PANTS, COATS, JACKETS,
`OVERALLS, AND DUNGAREES]
`
`U.S. Registration
`No.
`
`2409194
`
`Registration Date
`
`11/28/2000
`
`Word Mark
`
`Application Date
`
`07/24/1998
`
`Foreign Priority
`Date
`
`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 025. First use: First Use: 1910/00/00 First Use In Commerce: 1910/00/00
`Clothing, namely, shirts, t-shirts; short-sleeved and long-sleeved t-shirts; polo
`shirts; sweatshirts; hooded sweatshirts; robes; fleece pullovers; sport shirts;
`headwear, caps, visors; shorts; turtlenecks
`
`U.S. Registration
`No.
`Registration Date
`
`783711
`
`01/19/1965
`
`Word Mark
`Design Mark
`
`NONE
`
`Application Date
`
`04/13/1964
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 025. First use: First Use: 1935/00/00 First Use In Commerce: 1935/00/00
`MEN'S AND BOYS' SHIRTS, [ SHORTS, PANTS, COATS, JACKETS,
`OVERALLS, AND DUNGAREES ]
`
`U.S. Registration
`No.
`Registration Date
`
`2409194
`
`11/28/2000
`
`Word Mark
`
`NONE
`
`Application Date
`
`07/24/1998
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`Class 025. First use: First Use: 2000/05/26 First Use In Commerce: 2000/05/26
`
`pants for women, men and children
`
`U.S. Registration
`
`3933644
`
`Application Date
`
`03/10/2010
`
`Registration Date
`
`03/22/2011
`
`Word Mark
`
`ANVIL
`
`Design Mark
`
`Foreign Priority
`Date
`
`Description of
`Mark
`Goods/Services
`
`The mark consists of a rectangle designenclosing an anvil. The word "ANVlL"
`appears vertically to the right of the anvil design.
`Class 018. First use: First Use: 2000/09/07 First Use In Commerce: 2000/09/07
`
`shoulder bags, duffle bags, attachA© cases, tote bags, all purpose carrying
`bags; boater tote bags; sports bags; messenger bags
`
`Attachments
`
`75524866#TMSN.gif( bytes )
`76559816#TMSN.gif( bytes )
`77955770#TMSN.jpeg( bytes )
`72190855#TMSN.gif( bytes )
`75525252#TMSN.gif( bytes )
`77955750#TMSN.jpeg( bytes )
`NOO 79135264.pdf(320779 bytes)
`Exhibits to NOO 79135264.pdf(1461960 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.
`
`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 025. First use: First Use: 2000/05/26 First Use In Commerce: 2000/05/26
`pants for women, men and children
`
`U.S. Registration
`No.
`Registration Date
`
`3933644
`
`03/22/2011
`
`Word Mark
`Design Mark
`
`ANVIL
`
`Application Date
`
`03/10/2010
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`The mark consists of a rectangle designenclosing an anvil. The word "ANVIL"
`appears vertically to the right of the anvil design.
`Class 018. First use: First Use: 2000/09/07 First Use In Commerce: 2000/09/07
`shoulder bags, duffle bags, attaché cases, tote bags, all purpose carrying
`bags; boater tote bags; sports bags; messenger bags
`
`Attachments
`
`75524866#TMSN.gif( bytes )
`76559816#TMSN.gif( bytes )
`77955770#TMSN.jpeg( bytes )
`72190855#TMSN.gif( bytes )
`75525252#TMSN.gif( bytes )
`77955750#TMSN.jpeg( bytes )
`NOO 79135264.pdf(320779 bytes )
`Exhibits to NOO 79135264.pdf(1461960 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
`
`02/20/201 4
`
`/Betsy Wang Lee/
`
`Betsy Wang Lee
`
`Signature
`Name
`Date
`
`/Betsy Wang Lee/
`Betsy Wang Lee
`02/20/2014
`
`

`
` Trademark:
`
`
`
` Gildan Activewear SRL,
`OPP°5"‘=
`NOTICE OF OPPOSITION
`
`
`
`v.
`
`Globe International Nominees Pty Ltd,
`
`
`
` Applicant.
`
`NOTICE OF OPPOSITION
`
`Gildan Activewear SRL (“Opposer”), a Barbados Sociedad de Responsabilidad Limitada
`
`(SRL), having an address of Newton, Christ Church BB, Barbados 17047, believes it will be
`
`damaged by registration of the design mark
`
`
`
`shown in App. Serial No. 79/135,264
`
`in International Classes 9, 18 and 25 (“Applicant’s Mark”) and hereby opposes the same.
`
`As grounds for opposition, Opposer alleges:
`
`1.
`
`Globe International Nominees Pty Ltd (“Applicant”) has filed an application to
`
`register Applicant’s Mark for “articles of protective clothing for wear for protection against
`
`

`
`clothing especially made for use in laboratories, footwear and shoes for protection against
`
`accidents; articles of protective footwear for wear for protection against accident or injury for use
`
`in skateboarding, surfing, skiing, snowboarding, car racing, motocross, motorcycling, bicycling,
`
`motorsports, water sports, physical activities, extreme sports and workers; articles of protective
`
`headwear for wear for protection against accident or injury for use in skateboarding, surfing,
`
`skiing, snowboarding, car racing, motocross, motorcycling, bicycling, motorsports, water sports,
`
`physical activities, extreme sports and workers, clothing for protection against accidents;
`
`protective clothing for workers, helmets, and eyewear; eyewear, namely, eye covers for
`
`protective purposes, goggles, safety eyewear, sports eyewear, protective eyewear and component
`
`parts thereof, sunglasses, eyeglasses; protective and safety helmets, protective helmets for sports;
`
`protective sports helmets, chin straps, face masks, jaw pads and eye shields; protective face-
`
`shields for protective helmets; sports helmets; safety helmets; gloves for protection against
`
`accidents; support belts for workers. elbow pads, knee pads and shin guards for workers,
`
`reflective and illuminated clothing for safety purposes, clothing for protection against accidents,
`
`irradiation and fire, protective gloves for industrial use, protective head guards for industrial
`
`purposes, protective industrial boots, protective industrial shoes, protective work gloves,
`
`reflective and illuminated clothing for safety purposes, clothing for protection against chemicals”
`
`in International Class 9, “bags, namely, all purpose sports bags, all-purpose athletic bags, all-
`
`purpose carrying bags, athletic bags, book bags, bags for sports clothing, bags for sports, beach
`
`

`
`document cases, overnight cases, sports bags, tool bags sold empty,” in International Class 18,
`
`and “clothing, namely, tops, bottoms, t-shirts, shirts, sweatshirts, pants, beachwear, loungewear,
`
`jackets, pullovers, ski wear, surf wear, swim wear; painter's pants, carpenter's pants, overalls,
`
`coveralls, rain wear, sun protective clothing, namely, tops and bottoms, light-reflecting jackets;
`
`footwear; headgear, namely, headwear; accessories in this class, namely, belts, scarves, gloves,
`
`neckties, socks, headbands, fitted shoe or boot covering to protect the shoes or boots from water
`
`or other damage” in International Class 25, as evidenced by the publication of such mark in the
`
`Oflicial Gazette on February 11, 2014.
`
`2.
`
`Applicant is, upon information and belief, an Australian Company Limited by
`
`Shares with an address at 1 Fennell Street, Port Melbourne VIC 3207, Australia.
`
`3.
`
`Opposer or its predecessors-in-interest have used the mark ANVIL in connection
`
`with the manufacture and sale of wearing apparel since at least as early as 1910 and in connection
`
`with bags since at least as early as 2000. In addition, since at least as early as 1935, Opposer or
`
`its predecessors-in-interest have used various designs of an anvil as marks (collectively the
`
`“Anvil Design Mark”) for wearing apparel and, since at least as early as 2000, have used the
`
`Anvil Design Mark for bags.
`
`In addition, Opposer is the owner of the following U.S. federal registrations for ANVIL
`
`and the Anvil Design Mark:
`
`

`
`
`
`
`1,659,008
`
`ANVIL
`
`“Tank top shirts, sweat shirts” in Class 25-
` “Pants for women, men and children” in Class 25
`ANVIL-
`
` “Shirts and shorts” in Class 25
`
`2,418,031
`
`2,893,048
`
`October 12, 2004
`
`
`
`
`
`
`
`
`“Clothing, namely, shirts, t-shirts; short-sleeved
`and long-sleeved t-shirts; polo shirts; sweatshirts;
`hooded sweatshirts; robes; fleece pullovers; sport
`shirts; headwear, caps, visors; shorts; turtlenecks”
`in Class 25
`
`3,863,723
`
`October 19, 2010
`
`
`
`
`
`
`
`0,783,711
`
`January 19, 1965
`
`2,409,194
`
`November 28, 2000
`
`
`
`“Men’s and boys’ shirts” in Class 25
`
`“Pants for women, men and children” in Class 25
`
`
`
`3,933,644
`
`March 22, 2011
`
`“Shoulder bags, duffle bags, attaché cases, tote
`bags, all purpose carrying bags; boater tote bags;
`sports bags; messenger bags”
`
`
`
`(collectively, the “ANVIL Marks”).
`
`4.
`
`Opposer’s Registration Nos. 0,783,710; 0,903,069; 1,659,008; 2,418,031;
`
`2,893,048; 3,863,723; 0,783,711; 2,409,194; 3,933,644 are valid and subsisting, and areprima
`
`facie evidence of the validity of each registered mark set forth therein and of Opposer’s exclusive
`
`right to use each registered mark set forth therein. In addition, Opposer’s Registration Nos.
`
`0,783,710; 0,903,069; 1,659,008; 2,418,031; 2,893,048; 0,783,711; and 2,409,194 are
`
`

`
`5.
`
`There is no issue as to priority. Applicant’s filing date and claimed priority date
`
`are December 18, 2012 and July 6, 2012 respectively. The dates of issuance of Opposer’s
`
`registrations for the ANVIL Marks are well before Applicant’s filing date or claimed priority date
`
`for Applicant’s Mark.
`
`6.
`
`Opposer has sold its goods under the ANVIL Marks throughout the United States
`
`and the world and has developed exceedingly valuable goodwill with respect to the ANVIL
`
`Marks.
`
`7.
`
`By virtue of its efforts and the expenditure of considerable sums for promotional
`
`and advertising activities and by virtue of the excellence of its goods, Opposer has gained for its
`
`ANVIL Marks a most valuable reputation and has created, in the minds of the buying public, an
`
`exclusive association between the ANVIL Marks and its goods.
`
`8.
`
`The trademark proposed for registration by Applicant, namely,
`
`
`
`, is
`
`likely to be confused with Opposer’s ANVIL Marks because the marks are similar in appearance
`
`and overall commercial impression.
`
`9.
`
`Applicant seeks to register Applicant’s Mark as a mark in connection with goods
`
`that are related to the goods of Opposer and such use so nearly resembles Opposer’s use as to be
`
`

`
`Opposer would be caused and would result by reason of the fact that Applicant’s Mark is
`
`confusingly similar to Opposer’s ANVIL Marks. Persons familiar with Opposer’s ANVIL Marks
`
`would be likely to buy Applicant’s goods offered under Applicant’s Mark as goods offered and
`
`sold by Opposer. Furthermore, any defect, objection, or fault found with Applicant’s goods
`
`marketed under Applicant’s Mark would be likely to reflect upon and seriously injure the
`
`reputation that Opposer has established for its goods offered under the ANVIL Marks.
`
`1 1.
`
`Moreover, the Trademark Trial and Appeal Board has on several occasions found
`
`Opposer’s ANVIL Marks to be strong and protectable, and has further found applications for
`
`marks similar to Applicant’s Mark to be likely to cause confusion with Opposer’s ANVIL Marks.
`
`See Anvil Knitwear, Inc. v. Success Ware Inc., Opp. No. 91117782 / Canc. No. 92030393
`
`(T.T.A.B. June 22, 2004) and Anvil Knitwear, Inc. v. Success Ware, Inc., Opp. Nos. 91155386
`
`and 91159232 (T.T.A.B. Mar. 15, 2010). True and correct copies of these decisions are attached
`
`as Exhibits A and B, respectively.
`
`12.
`
`If Applicant is granted the registration herein opposed, such registration would be
`
`a source of damage and injury to Opposer.
`
`r’
`
`

`
`
`
`/‘
`
`an
`Beth M. G01
`Betsy Wang Lee
`
`Dated: Februaryiz 2014
`
`By:
`
`Attorneys for Opposer
`405 Howard Street
`
`San Francisco, CA 94105
`415-773-5700
`
`

`
`2040 Main Street, Fourteenth Floor
`
`Irvine, California 92614
`
`Dated: February&1,2014
`
`By: j Li)./L/\—
`
`tsy Wang Lee
`
`Attorneys for Opposer
`ORRICK, HERRINGTON & SUTCLIFFE LLP
`405 Howard Street
`
`San Francisco, California 94105
`
`

`
`Exhibit A
`
`

`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Trademark Trial and Appeal Board
`
`Anvil Knitwear,
`v.
`
`Inc.
`
`Success Ware Inc.
`
`Opposition No. 91117782
`and
`
`Cancellation No. 92030393
`
`Marie V. Driscoll of Fross Zelnick Lehrman & Zissu, P.C. for
`
`Anvil Knitwear,
`
`Inc.
`
`Success Ware Inc., pro se.
`
`Before Seeherman, Chapman and Holtzman, Administrative Trademark
`Judges.
`
`Opinion by Holtzman, Administrative Trademark Judge:
`
`An application has been filed by Success Ware Inc.
`
`("Success
`
`Ware" or "defendant")
`
`to register the mark shown below on the
`
`Principal Register for the following goods
`
`(as amended):
`
`"clothing, namely t—shirts, sweat tops, and sweat pants."1
`
`1 Application Serial No. 75494063 filed on June 1, 1998, alleging dates
`of first use and first use in commerce on August 22, 1996.
`
`

`
`On March 13, 2000, opposer, Anvil Knitwear,
`
`Inc.
`
`("Anvil
`
`Knitwear" or "plaintiff"), filed an opposition to registration of
`
`the above application. As grounds for opposition, plaintiff
`
`asserts that through its predecessor, plaintiff has used and
`
`registered the mark ANVIL and the design of an anvil for wearing
`
`apparel
`
`including sportswear;
`
`that plaintiff's marks are strong
`
`and represent a valuable business and goodwill; and that
`
`defendant's mark consisting of the design of an anvil for the
`
`goods identified in the application so resembles plaintiff's
`
`previously used and registered marks as to be likely to cause
`
`confusion, mistake or deception. Plaintiff has pleaded ownership
`
`of the following four registrations for the mark ANVIL in typed
`
`form: Registration No. 903069 for "men's, women's, boy's, girl's
`
`and children's shirts";2 Registration No. 783710 for "men's and
`
`boy's shirts";3 Registration No. 1659008 for "tank top shirts,
`
`sweat shirts and knitted dresses";4 and Registration No. 2201382
`
`for "caps."5
`
`2 Issued November 24, 1970.
`
`Issued January 19, 1965.
`
`4 Issued October 1, 1991.
`
`Issued November 3, 1998.
`
`

`
`
`
`Success Ware, by its original and amended answers, denied
`
`the salient allegations in the opposition.
`
`On March 24, 2000, Anvil Knitwear filed a petition to cancel
`
`Success Ware's Registration No. 2284417 for the mark shown below
`
`for "t-shirts, sweat pants, sweat shirts, sweat jackets, and
`
`sweatshorts."
`
`The terms "WARE," "INC." and "SPORTSWEAR" have
`
`7
`
`been disclaimed.
`
`SPCHTSVVEAJI
`
`The petition to cancel is based on the same ground,
`
`the same
`
`pleaded registrations and the same essential allegations as the
`
`notice of opposition.
`
`5 Issued January 19, 1965.
`
`7 Issued October 12, 1999.
`
`

`
`pleadings;
`
`the files of defendant's involved application and
`
`registration; plaintiff's testimony (with exhibits) of Mario F.
`
`Ortiz, a paralegal at the law firm of Fross Zelnick Lehrman &
`
`Zissu, P.C., and Anthony Corsano, Anvil Knitwear's vice president
`
`of sales and marketing; and defendant's notices of reliance on
`
`opposer's answers to certain interrogatories and on third—party
`
`registrations for marks containing or comprising the word "anvil"
`
`and/or the design of an anvil.“ Defendant also submitted the
`
`testimony (with exhibits) of Reva Payne, defendant's president.
`
`The plaintiff has objected to this submission. Neither party
`
`attended the other's depositions.
`
`Both parties have filed briefs.9 An oral hearing was not
`
`requested.
`
`Before proceeding to the merits of these cases,
`
`some
`
`preliminary matters require our attention.
`
`8 It was unnecessary for defendant to file notices of reliance on a
`status and title copy of its own challenged registration and portions
`of the testimony deposition of Mr. Corsano since these materials were
`already of record.
`
`9 Defendant filed a "reply" brief that was properly stricken by the
`Board on December 3, 2002.
`
`

`
`plaintiff's reply brief,
`
`that plaintiff did not move to strike
`
`the brief, and moreover,
`
`that plaintiff has not indicated any
`
`prejudice as a result of the late brief. Under the
`
`circumstances, and because it benefits the Board to have the
`
`briefs of both parties of record, we will consider defendant's
`
`late brief.
`
`In addition, during trial, plaintiff filed a motion to
`
`strike defendant's notice to take the deposition of Reva Payne.
`
`Because the motion did not come to the attention of Board until
`
`after the deposition was taken,
`
`the motion to strike was denied
`
`by the Board as moot.
`
`The Board otherwise deferred consideration
`
`of any objection to defendant's introduction of this deposition
`
`until final decision. We will address that objection now.
`
`Plaintiff had objected to the notice on the ground that to
`
`the extent it was intended to be a notice to take a deposition on
`
`written questions,
`
`the notice did not set forth the name or
`
`descriptive title of the officer before whom the deposition was
`
`to be taken under Trademark Rule 2.l24(c) and it did not provide
`
`the 20-day notice required by Trademark Rule 2.124(d) for
`
`plaintiff to serve cross-questions.
`
`The notice was served on
`
`

`
`defendant re-served the notice on April 6, 2001 and changed the
`
`date of the deposition to April 19, 2001. However, defendant
`
`incorrectly relied on Rule 31(4) of the Federal Rules of Civil
`
`Procedure rather than the Trademark Rules which govern these
`
`proceedings, and as a result,
`
`the re-served notice only allowed
`
`plaintiff 14 days to serve cross-questions. Nevertheless,
`
`defendant believed it had complied with or remedied all the
`
`procedural deficiencies in the notice, and proceeded with the
`
`deposition on the rescheduled date of April 19, 2001. Plaintiff
`
`did not serve cross—questions and filed its motion to strike the
`
`notice on April 17, 2001.
`
`While we do not consider the manner in which the deposition
`
`was taken to be an adequate basis on which to strike the
`
`testimony, defendant's failure to provide plaintiff with the
`
`requisite notice for the deposition is a serious deficiency.
`
`Nevertheless,
`
`taking defendant's pro se status into consideration
`
`and its unfamiliarity with Board rules and procedures, we have
`
`decided to consider this testimony, over plaintiff's objection,
`
`and accord it whatever probative value it may have.
`
`

`
`two prior rulings in this consolidated proceeding advised
`
`defendant corporation,
`
`through Ms. Payne, defendant's president,
`
`that in light of the technicalities of the procedural and
`
`substantive law involved in Board proceedings, it was recommended
`
`that defendant secure the services of an attorney who is familiar
`
`with such matters. Defendant was twice warned that compliance
`
`with the applicable rules and laws would be expected whether or
`
`not defendant is represented by counsel.
`
`Nevertheless, defendant chose not to obtain counsel, and as
`
`a result,
`
`there are many procedural irregularities in this case
`
`that stem from defendant's unfamiliarity with proper procedures.
`
`Despite these irregularities, we have given defendant great
`
`leeway in defending these cases by allowing defendant's testimony
`
`that was taken on faulty notice and its brief which was submitted
`
`nearly a month late.”
`
`We turn now to the merits of these cases.
`
`Plaintiff, Anvil Knitwear, Inc.,
`
`is a manufacturer of
`
`sportswear, principally shirts. Mr. Corsano (plaintiff's vice
`
`N Defendant's claim in its brief that its motion to reopen discovery
`and its motion to compel are still pending is incorrect.
`In fact,
`
`

`
`the imprinted sportswear market, selling its shirts to screen
`
`printers, embroiderers, and distributors who in turn sell the
`
`imprinted products, with the original ANVIL label,
`
`to retail
`
`outlets such as tourist shops and sports stores, and at special
`
`events such as the Super Bowl and the Boston Marathon. Plaintiff
`
`also sells directly to major retail chai