Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA685383
`ESTTA Tracking number:
`07/23/2015
`
`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 ex-
`tension
`Address
`
`Wholly Fit Inc.
`07/29/2015
`
`5000 Whitsett Ave., Suite 210
`Valley Village, CA 91607
`UNITED STATES
`
`Attorney informa-
`tion
`
`Tal Grinblat
`Lewitt, Hackman, Shapiro, Marshall & Harlan
`16633 Ventura Blvd., Suite 1100
`Encino, CA 91436
`UNITED STATES
`tgrinblat@lewitthackman.com, nkanter@lewitthackman.com
`Phone:818-990-2120
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`86414362
`07/23/2015
`
`Publication date
`Opposition Peri-
`od Ends
`
`03/31/2015
`07/29/2015
`
`Guidry, Sabrina N.
`Suite C
`Baton Rouge, LA 70808
`UNITED STATES
`Goods/Services Affected by Opposition
`
`Class 041. First Use: 2009/10/05 First Use In Commerce: 2009/10/15
`All goods and services in the class are opposed, namely: Fitness boot camps; Personal fitness train-
`ing services and consultancy; Physical fitness training of individuals and groups; Providing assist-
`ance, personal training and physical fitness consultation to individuals to help them make physical fit-
`ness, strength, conditioning, and exercise improvement in their daily living
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`Other
`
`Trademark Act section 2(d)
`Insufficient use in interstate commerce to be en-
`titled to register in the U.S. Trademark Office
`
`Mark Cited by Opposer as Basis for Opposition
`
`U.S. Application
`No.
`
`86472402
`
`Application Date
`
`12/05/2014
`
`
`ESTTA685383
`ESTTA Tracking number:
`07/23/2015
`
`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 ex-
`tension
`Address
`
`Wholly Fit Inc.
`07/29/2015
`
`5000 Whitsett Ave., Suite 210
`Valley Village, CA 91607
`UNITED STATES
`
`Attorney informa-
`tion
`
`Tal Grinblat
`Lewitt, Hackman, Shapiro, Marshall & Harlan
`16633 Ventura Blvd., Suite 1100
`Encino, CA 91436
`UNITED STATES
`tgrinblat@lewitthackman.com, nkanter@lewitthackman.com
`Phone:818-990-2120
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`86414362
`07/23/2015
`
`Publication date
`Opposition Peri-
`od Ends
`
`03/31/2015
`07/29/2015
`
`Guidry, Sabrina N.
`Suite C
`Baton Rouge, LA 70808
`UNITED STATES
`Goods/Services Affected by Opposition
`
`Class 041. First Use: 2009/10/05 First Use In Commerce: 2009/10/15
`All goods and services in the class are opposed, namely: Fitness boot camps; Personal fitness train-
`ing services and consultancy; Physical fitness training of individuals and groups; Providing assist-
`ance, personal training and physical fitness consultation to individuals to help them make physical fit-
`ness, strength, conditioning, and exercise improvement in their daily living
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`Other
`
`Trademark Act section 2(d)
`Insufficient use in interstate commerce to be en-
`titled to register in the U.S. Trademark Office
`
`Mark Cited by Opposer as Basis for Opposition
`
`U.S. Application
`No.
`
`86472402
`
`Application Date
`
`12/05/2014
`
`
`
`Registration Date
`
`NONE
`
`Word Mark
`Design Mark
`
`SANDBOX FITNESS
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 041. First use: First Use: 2014/01/01 First Use In Commerce: 2014/06/20
`Physical fitness instruction; Physical fitness training services
`
`Attachments
`
`86472402#TMSN.png( bytes )
`Notice of Opposition.pdf(297194 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
`
`/s/ Nicholas Kanter
`Nicholas Kanter
`07/23/2015
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition No.
`
`NOTICE OF OPPOSITION
`
`)
`)
`)
`
`) )
`
`)
`
`) )
`
`) ) ) ) )
`
`Application Serial No.2 86414362
`) Mark: Sandbox Training “Small Butt
`Mighty” & Design
`Filed: October 3, 2014
`Published: March 31, 2015
`
`In the matter of:
`
`WHOLLY FIT INC.
`
`Opposer
`
`v.
`
`SABRINA N. GUIDRY
`
`Applicant
`
`WHOLLY FIT INC. (“Opposer”), a corporation organized and existing under the laws
`
`of California with a principal place of business at 5000 Whitsett Ave., Suite 210, Valley Village,
`
`CA 91607, believes it will be damaged by the issuance of a registration for the trademark shown
`
`in Application Serial No. 86414362 and hereby opposes the same.
`
`As grounds for its opposition, Opposer alleges as follows, with knowledge concerning its
`
`own acts, and on information and belief as to all other matters:
`
`1.
`
`Opposer is a fitness company based in Los Angeles, California. Opposer provides
`
`physical fitness instruction and training services under the brand SANDBOX FITNESS
`
`(hereinafter referred to as “Opposer’s Mark”). Opposer is the senior user of SANDBOX
`
`FITNESS in connection with physical fitness services in many regions of the United States,
`
`including the Western United States, Central United States, Northern United States and certain
`
`states within the Southern and Eastern United States (the “Designated Regions”)‘.
`
`‘ Opposer does not concede that it is g the senior user of its mark throughout the entire United
`States. Further, Opposer does not concede that Applicant’s “first use in commerce” date, as
`stated in Applicant’s application is correct, and expressly reserves the right to amend this Notice
`accordingly to contest Applicant’s claimed first use dates.
`
`C: \User.r|IgrinbIaIlAppDaIalLocaIIMicrasafl\ Windaws\TemparaIy Internet Fileslcrmlenl. 0uIIook\A6l<
`
`
`
`2.
`
`Opposer has used its SANDBOX FITNESS mark since at least as early as
`
`January 2014 in connection with physical fitness and training. Such use has been continuous
`
`throughout the Designated Regions.
`
`3.
`
`On October 3, 2014, Applicant SABRINA N. GUIDRY (“Applicant”) filed
`
`Application Serial No. 86414362 (the “Application”) to register the mark SANDBOX
`
`TRAINING “SMALL BUTT MIGHTY” & Design (hereinafter referred to as “Applicant’s
`
`Mark”).
`
`4.
`
`Applicant applied to register Applicant’s Mark in International Class 041 for
`
`physical fitness training services and consultancy, among other services in the fitness field.
`
`Applicant’s Application claims first use since October 2009. To Opposer’s knowledge and
`
`belief, Applicant’s use has been limited to Baton Rouge, Louisiana.
`
`COUNT I — LIKELIHOOD OF CONFUSION
`
`5.
`
`Opposer repeats and incorporates by reference its allegations in Paragraphs 1
`
`through 4 as if set forth in full herein.
`
`6.
`
`Opposer’s Mark and Applicant’s Mark are substantially similar in appearance,
`
`sound and commercial impression. There is direct overlap between the parties’ services — i.e.,
`
`fitness training and instruction/consultancy.
`
`7.
`
`Because the parties’ marks are substantially similar and the parties’ services
`
`directly overlap, there is a risk that consumers will mistake Opposer’s services for those of
`
`Applicant, and vice versa.
`
`8.
`
`Opposer is the senior user of SANDBOX FITNESS in the Designated Regions.
`
`As senior user of SANDBOX FITNESS in connection with physical fitness and training
`
`services in the Designated Regions, Opposer has superior rights in and to SANDBOX FITNESS
`
`over Applicant in the Designated Regions.
`
`9.
`
`Because Opposer is the senior user of SANDBOX FITNESS for physical fitness
`
`and training services in the Designated Regions, Opposer has the right to enjoin junior users,
`
`such as Applicant, from using confusingly similar marks, such as Applicant’s Mark, in
`
`
`
`connection with physical fitness, training and related services in the Designated Regions.
`
`10.
`
`It would be inequitable, unfair and unjust for Applicant to obtain a registration
`
`which would give Applicant a basis to claim an exclusive right to use Applicant’s Mark over
`
`Opposer’s use of Opposer’s Mark in the Designated Regions. Therefore Applicant is not entitled
`
`to registration of Applicant’s Mark on the Principal Register of the U.S. Trademark Office.
`
`COUNT II - INSUFFICIENT USE IN INTERSTATE COMMERCE TO BE
`
`ENTITLED TO REGISTER IN U.S. TRADEMARK OFFICE
`
`11.
`
`Opposer repeats and incorporates by reference its allegations in Paragraphs 1
`
`through 10 as if set forth in full herein.
`
`12.
`
`Even if Applicant first used Applicant’s Mark before Opposer first used
`
`Opposer’s Mark for the subject services (which Opposer does not concede), Applicant’s use of
`
`Applicant’s Mark has been limited to Louisiana. As such, Applicant did not use Applicant’s
`
`Mark in interstate commerce. The non-use of Applicant’s Mark in interstate commerce is a
`
`ground to deny registration of Applicant’s Mark. Alternatively, Applicant’s use of Applicant’s
`
`Mark was too minimal to constitute bona fide trademark use in interstate commerce, thereby not
`
`entitling Applicant to a registration.
`
`13.
`
`Based on the foregoing, Applicant’s use of Applicant’s Mark is likely to cause
`
`confusion, mistake or deception in the minds of consumers as to the origin of Applicant’s
`
`services in violation of Section 2(d) of the Lanham Act, 15, U.S.C. §1052(d), with consequent
`
`injury to Opposer and the public. In addition, Applicant’s use is insufficient to constitute use in
`
`interstate commerce. Accordingly, Applicant’s Application should be denied.
`
`
`
`WHEREFORE, Opposer requests that this opposition be sustained and that the
`
`registration of Application Serial No. 86414362 be denied.
`
`DATED: July 23, 2015
`
`LEWITT, HACKMAN, SHAPIRO,
`MARSHALL & HARLAN
`
`By:
`
`/s/ Nicholas Kanter
`Tal Grinblat, CA Bar No. 192842
`Nicholas Kanter, CA Bar No. 239436
`LEWITT, HACKMAN, SHAPIRO,
`MARSHALL & HARLAN
`16633 Ventura Boulevard, 11"‘ Floor,
`Encino, CA 91436
`(818) 990-2120 (t)
`(818) 981-4764 (1)
`tgr1nb1at@lewitthackman.com
`nkanter@lewitthackman.com
`
`
`
`CERTIFICATE OF SERVICE
`
`It is hereby certified that o11Julygqj 2015, a copy of the foregoing NOTICE OF
`
`OPPOSITION has been sent by First Class, prepaid, United States Postal Service to
`
`Sabrina N. Guidry at the address below:
`
`4836 REVERE AVE STE C
`
`BATON ROUGE, LOUISIANA 70808-3191
`UNITED STATES
`
`/s/ Nicholas Kanter
`Nicholas Kanter
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