Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA598854
`ESTTA Tracking number:
`04/16/2014
`
`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
`
`Varsity Spirit Corporation
`Corporation
`6745 Lenox Center Court
`Memphis, TN 38115
`UNITED STATES
`
`Citizenship
`
`Tennessee
`
`Attorney
`information
`
`Arlana S. Cohen
`Cowan, Liebowitz & Latman, P.C.
`1133 Avenue of the Americas
`New York, NY 10036
`UNITED STATES
`ame@cll.com, asc@cll.com, las@cll.com, trademark@cll.com, jaj@cll.com
`Phone:212-790-9200
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`86078554
`04/16/2014
`
`Publication date
`Opposition
`Period Ends
`
`03/18/2014
`04/17/2014
`
`T-HOUSE INC
`5040 North 5th Street
`Philadelphia, PA 19120
`PANAMA
`Goods/Services Affected by Opposition
`
`Class 025. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Athletic apparel, namely, shirts, pants,
`jackets, footwear, hats and caps, athletic uniforms; Hooded sweatshirts; Sweatshirts
`
`Grounds for Opposition
`
`Other
`
`Please see attached pleading.
`
`Attachments
`
`NOO - April 16th - AMERICAN VARSITY since 1983.pdf(325205 bytes )
`
`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.
`
`Certificate of Service
`
`Signature
`
`/Aryn M. Emert/
`
`
`ESTTA598854
`ESTTA Tracking number:
`04/16/2014
`
`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
`
`Varsity Spirit Corporation
`Corporation
`6745 Lenox Center Court
`Memphis, TN 38115
`UNITED STATES
`
`Citizenship
`
`Tennessee
`
`Attorney
`information
`
`Arlana S. Cohen
`Cowan, Liebowitz & Latman, P.C.
`1133 Avenue of the Americas
`New York, NY 10036
`UNITED STATES
`ame@cll.com, asc@cll.com, las@cll.com, trademark@cll.com, jaj@cll.com
`Phone:212-790-9200
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`86078554
`04/16/2014
`
`Publication date
`Opposition
`Period Ends
`
`03/18/2014
`04/17/2014
`
`T-HOUSE INC
`5040 North 5th Street
`Philadelphia, PA 19120
`PANAMA
`Goods/Services Affected by Opposition
`
`Class 025. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Athletic apparel, namely, shirts, pants,
`jackets, footwear, hats and caps, athletic uniforms; Hooded sweatshirts; Sweatshirts
`
`Grounds for Opposition
`
`Other
`
`Please see attached pleading.
`
`Attachments
`
`NOO - April 16th - AMERICAN VARSITY since 1983.pdf(325205 bytes )
`
`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.
`
`Certificate of Service
`
`Signature
`
`/Aryn M. Emert/
`
`
`
`Name
`Date
`
`Aryn M. Emert
`04/16/2014
`
`
`
`Ref. No. 25894-134
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`QZEEi¥§}'é13ii£13E'E6i{i56£,Z{¥£5{§"""""ix
`Opposer,
`)
`V.
`3
`)
`)
`
`.................................................... --X
`
`Applicant.
`
`T-HOUSE, INC.,
`
`Opposition No.
`
`NOTICE OF OPPOSITION
`
`In the matter of trademark application Serial No. 86/078,554 for the trademark
`
`AMERICAN VARSITY since 1983 (and Design), filed September 30, 2013 and published for
`
`opposition in the Official Gazette of March 18, 2014, Varsity Spirit Corporation, a Tennessee
`
`corporation, having a business address at 6745 Lenox Center Court, Memphis, TN 38115,
`
`believes it will be damaged and hereby opposes the registration of said trademark. The grounds
`
`for opposition are as follows:
`
`1.
`
`Applicant, T-House, Inc., (“Applicant”), by the application herein opposed, seeks
`
`to register “AMERICAN VARSITY EST. 1983” as a trademark for use with respect to “athletic
`
`apparel, namely, shirts, pants, jackets, footwear, hats and caps, athletic uniforms; hooded
`
`sweatshirts; sweatshirts” in Class 25 (hereinafter referred to as “Applicant’s Mark”). This
`
`application is based on applicant’s alleged intent-to—use App1icant’s Mark.
`
`2.
`
`Opposer, together with Varsity Spirit Fashions & Supplies, Inc. and Varsity
`
`Brands, Inc., all of whom are in direct privity with one another (hereinafter referred to
`
`individually and collectively as the “Varsity Companies”), is engaged in the business of, inter
`
`25894/134/1480031.]
`
`
`
`alia, selling clothing products including, without limitation, apparel for men, women and
`
`children, using its trademark and trade name “Varsity” (“Opposers’ Trade Name”).
`
`3.
`
`Opposer, itself or through its licensees, has used, since long before App1icant’s
`
`alleged date of first use, and continues to use in commerce, Opposer’s Trade Name and the mark
`
`“VARSITY” for, inter alia, various clothing products and related accessories. Opposer has long
`
`sold its VARSITY clothing products online at “www.varsity.com” and through catalogs
`
`(“Opposer’s Common Law Rights”).
`
`4.
`
`Opposer, through the Varsity Companies, is the owner of the following trademark
`
`and service mark registrations in the United States without limitation:
`
`MARK
`VARSITY
`
`1 REG. NO. REG. DATE
`2,082,554
`7/22/97
`
`
`
`VARSITY
`
`2,526,564
`
`1/08/02
`
`‘
`JUNIOR VARSITY
`
`1,575,830
`
`1/02/90
`
`SPIRIT FASHIONS Li
`
`VARSITY SPIRIT
`FASHIONS
`
`1,680,452
`
`3/24/92
`
`VARSITY SPIRIT
`
`1
`
`,796,645
`
`l
`
`10/05/93
`
`25894/134/1480031 .1
`
`GOODS/SERVICES
`Mens uriderwear; r—shii1s=,briefs; athletic
`shirts; undergarments; pajamas; robes;
`nightshirts; loungewear and boxer shorts
`sold through retail outlets.
`Athletic shirts, athletic shorts, athletic
`tops, body suits, dresses, hats, jackets,
`jerseys, jumpers, leotards, pants, skirts,
`sweaters, sweat pants, sweat shirts, T-
`shirts, unitards, and warm-up suits sold to
`colleges, high schools and school-
`affiliated teams, clubs, groups and
`individuals by direct sales through sales
`representatives or employees of applicant,
`through mail order catalog services or
`through campus book stores or other retail
`outlets located at colleges and high
`schools; uniforms for cheerleaders, drill
`teams, pompon squads, pep squads,
`mascots, bands and booster clubs
`Mail order catalog services in the field of
`
`cheerleaderuniforms for younger age
`
`groups
`Men’s and women’s cheerleader and
`dance team clothing; namely, skirts,
`sweats, sweaters, tops, pants, shoes
`Conducting cheerleading, dance teams and
`
`
`
`MARK
`
`I REG. NO. REG. DATE
`
`CORPORATION
`
`VARSITY SPORT
`
`2,293,083
`
`11/16/99
`
`V VARSITY
`
`2,357,303
`
`VARSITY
`
`1,812,198
`
`6/13/00
`
`-—?-r
`
`12/21/93
`
`VARSITY (Block
`letters)
`
`3,928,856
`
`3/08/11
`
`VARSITY (Stylized)
`VARSITY
`
`879,543
`3,696,209
`
`10/28/69
`
`10/13/09
`
`VARSITY
`
`3,436,493
`
`5/27/08
`
`25894/134/148003 1.1
`
`GOODS/SERVICES
`
`‘Tl
`
`gymnastics training camps, clinics,
`seminars, workshops, competitions,
`championships and tournaments; per-
`forming cheerleading at bowl games;
`private gymnastics, cheerleader and dance
`team coaching; clothing; namely,
`cheerleader and dance team uniforms with
`
`pom-poms, gloves, vests, tops, shirts,
`skirts, jumpers, warm—up suits, pants,
`sweaters, shoes, socks, sweatshirts, T-
`shirts, shorts, sweat pants, tights, leotards,
`unitards, dresses and jackets
`Athletic wear, namely, sports shirts, sports
`shorts, gloves, vests, tops, skirts, jumpers,
`warm-up suits, pants, sweaters, athletic
`shoes, sweatshirts, T-shirts, athletic shorts,
`sweat—pants, tights, leotards, unitards,
`dresses, and jackets
`Cheerleader uniforms, drill team uniforms
`and pompon squad uniforms
`Men’s and women’s sleepwear,
`underwear, night shirts, loungewear and
`boxer shorts
`
`Footwear, namely, cheerleader shoes,
`dance shoes, slippers, flip-flops and
`sandals; athletic shoes
`
`Pajama and robe sets
`
`Pre-recorded videotapes and compact
`discs containing music and/or movies;
`camps, namely, children's recreational
`camps, cheerleading camps, and soccer
`camps
`
`-1
`
`Online retail store services featuring, pre-
`recorded videotapes and compact discs,
`school supplies, jewelry, home furnishing;
`providing a website which features
`advertisements for the goods and services
`of others on topics of interest to teenage
`boys and girls on a global computer
`network; travel agency services, namely,
`making reservations; providing an online
`[_database in the field of topics of interest toj
`
`
`
`MARK
`
`TREG. NO. REG. DATE 1
`
`GOODSISERVICES
`
`3,689,696
`
`9/29/09
`
`3,418,764
`
`4/29/08
`
`3,920,302
`
`11/24/08
`
`3,371,683
`
`1/22/08
`
`
`
`VARSITY.COM
`
`VARSITY.COM
`
`
`
`
`
`VARSITY TV
`
`VARSITY WIRED
`
`
`
`teenage boys and girls, namely fashion.
`Camps, namely, children's recreational
`camps, cheerleading camps, and soccer
`camps
`
`
`
`Online retail store services featuring pre-
`recorded videotapes and compact discs,
`school supplies, jewelry and home
`furnishings; providing a website which
`features advertisements for the goods and
`services of others on topics of interest to
`teenage boys and girls on a global
`computer network; travel agency services,
`namely, making reservations; and
`providing an online database in the field
`of topics of interest to teenage boys and
`girls, namely, fashion.
`An interactive website featuring
`entertainment information and
`
`cheerleading videos for students and
`teens; online social networking services
`for students and teen
`
`Entertainment services, namely, providing
`a website featuring audio and video
`presentations featuring cheerleading and
`dance, cheerleading and dance
`competitions, audio clips, video clips,
`photographs and fashion
`Providing educational and instructional
`courses in the fields of spirit, cheer and
`dance delivered both online and through
`the classroom
`
`
`
`
`
`Providing educational and instructional
`courses in the fields of cheerleading
`routines, stunts, sequences, skills and
`drills, choreography and dance technique,
`and safety information to participants in
`the spirit, cheer, and dance team industries
`delivered both online and through the
`
`10/23/07
`
`06/01/10
`
`
`
`VARSITY
`
`3,320,692
`
`CHOREOGRAPHY
`
`VARSITY
`
`3,797,635
`
`UNIVERSITY
`
`
`
`
`
`
`classroom.
`
`25894/134/1480031.]
`
`
`
`(Opposer’s Common Law Rights, and trademark/service mark registrations are referred to
`
`hereinafter as the “VARSITY Family of Marks”).
`
`5.
`
`By virtue of extensive use in commerce of the mark VARSITY in the United
`
`States, the relevant trade and public have come to associate goods and services bearing their
`
`VARSITY Family of Marks with Opposer.
`
`6.
`
`Opposer’s first use and registration of its VARSITY Family of Marks in
`
`connection with its goods and services long predates Applicant’s alleged date of first use in the
`
`application to register Applicant’s Mark herein opposed.
`
`7.
`
`The goods of Applicant and the goods of Opposer are identical and/or
`
`substantially similar and related.
`
`8.
`
`Applicant’s Mark uses “VARSITY” as the dominant portion of Applicant’s Mark
`
`and is identical to Opposer’s VARSITY Family of Marks.
`
`9.
`
`Applicant’s Mark, as applied to the goods set forth in the application herein
`
`opposed, so resembles Opposer’s VARSITY Family of Marks as applied to its goods and
`
`services that it is likely to cause confusion, mistake and/or deception.
`
`10.
`
`In addition, upon information and belief, Applicant was not “established” in 1983.
`
`11.
`
`Accordingly, Applicant’s Mark is deceptively misdescriptive and unregistrable as
`
`it conveys to the public a characteristic of the goods that is untrue, namely, that in fact it was
`
`established in 1983.
`
`12.
`
`Such characteristic enhances the likelihood of confusion with Opposer, the long-
`
`established owner of the VARSITY Family of Marks.
`
`13.
`
`If Applicant is permitted to register Applicant’s Mark for the goods set forth in
`
`the application herein opposed, confusion of the relevant trade and public resulting in damage
`
`25894/134/148003 1.1
`
`
`
`and injury to Opposer would be likely to result. Any persons familiar with the goods and
`
`services of Opposer would be likely to assume that Applicant’s goods are sponsored by or
`
`produced under license from or otherwise affiliated with Opposer. Furthermore, any objection to
`
`or fault found with Applicant’s goods provided under its mark would necessarily reflect on and
`
`seriously injure the reputation that Opposer has established for its goods sold and services
`
`offered under the VARSITY Family of Marks.
`
`14.
`
`If Applicant were granted a registration for the mark herein opposed, it would
`
`obtain thereby at least a primafacie exclusive right to use the mark. Such registration would be
`
`a source of damage and injury to Opposer.
`
`WHEREFORE, Opposer prays that registration of the mark of application Serial
`
`No. 86/078,554 be refused and that this opposition be sustained.
`
`The filing fee of $300.00 is enclosed herewith and any additional fees or deficiencies
`
`deemed to be due and owning in connection with this opposition may be charged to Deposit
`
`Account No. 03-3415 and any overpayment may be credited thereto.
`
`Dated: April 16, 2014
`New York, New York
`
`Respectfully submitted,
`
`COWAN, LIEBOWITZ & LATMAN, P.C.
`
`By /Arlana S. Cohen/
`Arlana S. Cohen
`
`1133 Avenue of the Americas
`
`New York, New York 10036-6799
`
`Tel: (212) 790-9237
`Fax: (212) 575-0671
`Attorneys for Opposer
`
`25894/134/l48003l.1
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that on April 16, 2014 a true and correct copy of the
`
`Notice of Opposition was served by United States Mail, First Class, by depositing it, postage
`
`prepaid, in a depository under the exclusive custody and control of the United States Postal
`
`Service, addressed to:
`
`Joseph S. Park
`Park & Park, LLP
`12909 26th Ave
`
`Suite 401
`
`Flushing, NY 11354-1131
`
`Jean A. Je
`CIA/Y\
`
`25894/134/1480031.]
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