Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA709899
`ESTTA Tracking number:
`11/20/2015
`
`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
`
`Retail Royalty Company
`11/25/2015
`
`101 Convention Center Drive
`Las Vegas, NV 89109
`UNITED STATES
`
`Attorney informa-
`tion
`
`Laura Miller
`Kilpatrick Townsend & Stockton LLP
`1001 West Fourth Street
`Winston-Salem, NC 27101
`UNITED STATES
`lamiller@kilpatricktownsend.com, lpearson@kilpatricktownsend.com, tmad-
`min@kilpatricktownsend.com, agarcia@kilpatricktownsend.com, Phone:336 607
`7300
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`86557946
`11/20/2015
`
`Publication date
`Opposition Peri-
`od Ends
`
`07/28/2015
`11/25/2015
`
`Williams, Devon
`5406 Beverly Rd
`Brooklyn, NY 11203
`UNITED STATES
`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: Bandanas; Beanies; Caps; Gloves; Hats;
`Hooded sweatshirts; Scarves; Shirts; Shoes; Sweat pants; T-shirts
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act section 2(d)
`
`Mark Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`Registration Date
`
`3878197
`
`11/16/2010
`
`Word Mark
`
`NONE
`
`Application Date
`
`01/31/2006
`
`Foreign Priority
`Date
`
`NONE
`
`
`ESTTA709899
`ESTTA Tracking number:
`11/20/2015
`
`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
`
`Retail Royalty Company
`11/25/2015
`
`101 Convention Center Drive
`Las Vegas, NV 89109
`UNITED STATES
`
`Attorney informa-
`tion
`
`Laura Miller
`Kilpatrick Townsend & Stockton LLP
`1001 West Fourth Street
`Winston-Salem, NC 27101
`UNITED STATES
`lamiller@kilpatricktownsend.com, lpearson@kilpatricktownsend.com, tmad-
`min@kilpatricktownsend.com, agarcia@kilpatricktownsend.com, Phone:336 607
`7300
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`86557946
`11/20/2015
`
`Publication date
`Opposition Peri-
`od Ends
`
`07/28/2015
`11/25/2015
`
`Williams, Devon
`5406 Beverly Rd
`Brooklyn, NY 11203
`UNITED STATES
`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: Bandanas; Beanies; Caps; Gloves; Hats;
`Hooded sweatshirts; Scarves; Shirts; Shoes; Sweat pants; T-shirts
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act section 2(d)
`
`Mark Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`Registration Date
`
`3878197
`
`11/16/2010
`
`Word Mark
`
`NONE
`
`Application Date
`
`01/31/2006
`
`Foreign Priority
`Date
`
`NONE
`
`
`
`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 003. First use: First Use: 2006/10/00 First Use In Commerce: 2006/10/00
`After-shave lotions, body cream, cologne, perfume, liquid soaps for hand,
`face,and body
`Class 018. First use: First Use: 2004/07/00 First Use In Commerce: 2004/07/00
`Athletic bags, backpacks, barrel bags, beach bags, book bags, duffel bags,
`shoulder bags, tote bags, clutch purses, coin purses, drawstring pouches, hand-
`bags, purses, and wallets
`Class 025. First use: First Use: 2003/08/00 First Use In Commerce: 2003/08/00
`Clothing and accessories, namely, blazers, vests, sweaters, turtleneck sweaters,
`skirts, pants, jeans, shorts, shirts, t-shirts, blouses, polo shirts, rugby shirts,
`sweatshirts, sweatpants; swimwear;sleepwear; underwear, namely, boxer
`shorts, shell bra tanks, and undershirts; outerwear, namely, jackets, vests,
`coats,pea coats, gloves, scarves; belts; footwear, namely, socks, shoes, slip-
`pers, leather boots, sandals, flipflops, sneakers, clogs and slides; canvas shoes,
`headwear, namely, hats, caps, baseball caps, visors, headbands
`Class 035. First use: First Use: 2004/07/00 First Use In Commerce: 2004/07/00
`Retail store services, computerized online retail store services, and phone order
`services all featuring a wide range of goods in the nature of fragrances, personal
`care goods; sunglasses; jewelry and wristwatches; a wide range of bags
`andwallets, handbags, purses, shoulder bags, school bags, backpacks, duffle
`bags; and wearing apparel and clothing accessories, namely, clothing, head-
`wear and footwear
`
`Attachments
`
`78803194#TMSN.png( bytes )
`AEO-Devon Williams- NOO (Flying Creature Design).pdf(953476 bytes )
`
`The undersigned hereby certifies that a copy of this paper has been served upon all parties, at their address
`
`Certificate of Service
`
`
`
`record by First Class Mail on this date.
`
`Signature
`Name
`Date
`
`/Laura Miller/
`Laura Miller
`11/20/2015
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`In the Matter of Serial No.: 86/557,946
`Mark: 8DEVOTIONS & Design Mark
`
`
`
`Opposition No. ____________
`
`
`
`
`Filing Date: March 9, 2015
`Publication Date: July 28, 2015
`
`
`
`RETAIL ROYALTY COMPANY,
`
`
`
`
`
`
`
`
`
`Opposer,
`
` v.
`
`DEVON WILLIAMS,
`
`
`
`Applicant.
`
`NOTICE OF OPPOSITION
`
`
`Opposer Retail Royalty Company, a Nevada corporation with an address at 101
`
`
`
`
`
`
`
`
`Convention Center Drive Las Vegas, Nevada 89109 (“Opposer”) believes that it will be damaged
`
`by the registration of Application Serial No. 86/557,946 (the “Application”) and hereby opposes
`
`the same pursuant to 15 U.S.C. § 1063.
`
`As grounds for its opposition, Opposer alleges as follows:
`
`1.
`
`Opposer, together with its affiliated companies, including American Eagle
`
`Outfitters, Inc., (collectively, “AEO”) designs, markets, and sells clothing, accessories, and other
`
`
`
`products and operates retail stores under multiple word and design trademarks including the
`
`flying eagle design mark shown below.
`
`
`
`(the “Flying Eagle Design Mark.”) AEO uses the Flying Eagle Design Mark extensively on its
`
`products and in connection with its Internet and retail sales.
`
`2.
`
`Since it was founded in 1977, AEO has built one of the most popular and highly
`
`respected lifestyle brands and has become one of the top-ranking retailers in the United States.
`
`3.
`
`AEO sells its well-designed, high quality merchandise at its own AMERICAN
`
`EAGLE OUTFITTERS retail stores and on its e-commerce website located at www.ae.com.
`
`AEO opened its first AMERICAN EAGLE OUTFITTERS retail store in the United States in
`
`1977, and now operates and sells its privately branded products in over 900 retail stores. More
`
`than 850 of these retail stores are located in the United States. AEO’s stores prominently feature
`
`its Flying Eagle Design Mark.
`
`4.
`
`Among the products AEO has sold under the Flying Eagle Design Mark are
`
`clothing and accessories, including shirts, t-shirts, shorts, sweatshirts, outerwear, jackets,
`
`sleepwear, footwear, backpacks, purses, and book bags. AEO also uses the Flying Eagle Design
`
`Mark extensively in connection with its retail and online retail services selling these products.
`
`Examples of AEO products bearing the Flying Eagle Design Mark are shown below:
`
`
`
`
`
`2
`
`
`
`
`
`5.
`
`AEO has spent substantial sums of money to promote the goods and services it
`
`offers under its Flying Eagle Design Mark. Based on AEO’s extensive use and promotion of the
`
`Flying Eagle Design Mark, AEO has built and now owns enormously valuable goodwill
`
`3
`
`
`
`symbolized by this mark, and the purchasing public strongly associates the Flying Eagle Design
`
`Mark with AEO.
`
`6.
`
`In addition to its common law rights in the Flying Eagle Design Mark, AEO is the
`
`owner of U.S. Trademark Registration No. 3,878,197 for the Flying Eagle Design Mark (the
`
`“AEO Eagle Design Registration”). The AEO Eagle Design Registration, which registered on
`
`November 16, 2010, covers, among other things, the following goods in Class 25:
`
`clothing and accessories, namely, blazers, vests, sweaters, turtleneck sweaters, skirts,
`pants, jeans, shorts, shirts, t-shirts, blouses, polo shirts, rugby shirts, sweatshirts,
`sweatpants; swimwear; sleepwear; underwear, namely, boxer shorts, shell bra tanks, and
`undershirts; outerwear, namely, jackets, vests, coats, pea coats, gloves, scarves; belts;
`footwear, namely, socks, shoes, slippers, leather boots, sandals, flipflops, sneakers, clogs
`and slides; canvas shoes, headwear, namely, hats, caps, baseball caps, visors, [and]
`headbands.
`
`
`
`The AEO Eagle Design Registration is valid and in full force and effect, and thus constitutes
`
`prima facie evidence of Opposer’s exclusive right to use the AEO Eagle Design Mark in
`
`commerce in connection with the goods and services specified in the Registration. The AEO
`
`Eagle Design Registration has been registered on the Principal Register for more than five years.
`
`Pursuant to 37 C.F.R. § 2.122(d)(1), current printouts of information from electronic database
`
`records of the USPTO showing the current status and title of the AEO Eagle Design Registration
`
`are attached as Exhibit A.
`
`7.
`
`On March 9, 2015, well after Opposer’s Flying Eagle Design Mark became well-
`
`known, Devon Williams (the “Applicant”) filed his application (App. Ser. No. 86/557,946) to
`
`register the silhouetted design mark shown below (“Applicant’s Mark”) for t-shirts, sweat pants,
`
`shoes, shirts, scarves, hooded sweatshirts, hats, gloves, caps, beanies, and bandanas in Class 25.
`
`4
`
`
`
`8.
`
`On July 28, 2015, the USPTO published the Application in the Trademark
`
`
`
`Official Gazette.
`
`9.
`
`There is no issue as to priority. AEO began using its Flying Eagle Design Mark in
`
`commerce prior to the March 9, 2015 filing date of Applicant’s intent-to-use Application.
`
`Furthermore, the AEO Eagle Design Registration issued in 2010, which is also prior to the filing
`
`date of the Application.
`
`10.
`
`The goods identified in the Application are identical to or highly related to the
`
`goods on which AEO has previously used the Flying Eagle Design Mark and that are identified
`
`in the AEO Eagle Design Registration. Most of the goods listed in the Application, specifically,
`
`t-shirts, sweatpants, shirts, gloves, scarves, shoes, hats, caps and hooded sweatshirts, are identical
`
`to the goods identified in the AEO Eagle Design Registration.
`
`11.
`
`Accordingly, Applicant’s use of Applicant’s Mark for the goods set forth in the
`
`Application is likely to cause consumers to be confused, to be deceived, and to assume
`
`erroneously that Applicant’s goods are those of AEO, or that Applicant is in some way
`
`connected with, sponsored by, or affiliated with AEO, all in violation of Section 2(d) of the
`
`Lanham Act, 15 U.S.C. § 1052(d), and with consequent injury to AEO and the public.
`
`12.
`
`Pursuant to Section 13(a) of the Lanham Act, 15 U.S.C. § 1063(a), AEO believes
`
`that it will be damaged by registration of Applicant’s Mark in that members of the purchasing
`
`public are likely to be confused or mistaken that Applicant’s goods offered under Applicant’s
`
`5
`
`
`
`Mark originate from AEO, or from the same source as goods sold under the Flying Eagle Design
`
`Mark, or that such goods of Applicant are sponsored by, endorsed by, or affiliated with the
`
`source of goods sold under the Flying Eagle Design Mark. Such likelihood of confusion results
`
`in damage to the goodwill among purchasers and the trade that the Flying Eagle Design Mark
`
`symbolizes.
`
`13.
`
`If Applicant is granted the registration herein opposed, it would thereby obtain a
`
`prima facie exclusive right to the use of Applicant’s Mark. Such registration would be a source
`
`of damage and injury to Opposer.
`
`
`
`WHEREFORE, Opposer requests that that registration of Application Serial No.
`
`86/557,946 be denied pursuant to 15 U.S.C. §§ 1052(d) and 1063(a).
`
`
`
`The opposition fee in the amount of $300.00 for a notice of opposition in one class is
`
`submitted herewith. If for any reason this amount is insufficient, it is requested that Kilpatrick
`
`Townsend & Stockton LLP’s Deposit Account No. 11-0860 be charged with any deficiency.
`
`Please recognize Lisa Pearson, Laura Miller, and the law firm of Kilpatrick Townsend &
`
`Stockton LLP as attorneys for Opposer in connection with this opposition proceeding. Please
`
`address all correspondence regarding this proceeding to Laura Miller at Kilpatrick Townsend &
`
`Stockton LLP, 1001 West Fourth Street, Winston-Salem, North Carolina, 27101.
`
`6
`
`
`
`Dated: November 20, 2015
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`KILPATRICK TOWNSEND & STOCKTON LLP
`
`
`
`By: /s/ Laura Miller
`
`
`Lisa Pearson
`1114 Avenue of the Americas, 21st Floor
`New York, New York 10036
`Telephone: (212) 775-8700
`
`Laura Miller
`1001 West Fourth Street
`Winston-Salem, North Carolina 27101-2400
`Telephone: (336) 607-7300
`
`
`
`Attorneys for Opposer, Retail Royalty Company
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`CERTIFICATE OF TRANSMITTAL
`
`
`I hereby certify that a true and correct copy of the foregoing NOTICE OF
`
`OPPOSITION is being filed electronically with the TTAB via ESTTA on this, the 20th day of
`
`November, 2015.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`/s/ Laura Miller
`KILPATRICK TOWNSEND & STOCKTON LLP
`
`
`
`
`
`
`7
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a true and correct copy of the foregoing NOTICE OF
`
`
`
`OPPOSITION has been served on counsel for Applicant on November 20, 2015, via First Class
`
`U.S. Mail, postage prepaid, and addressed as follows:
`
`Devon Williams
`5406 Beverly Road
`Brooklyn, New York, 11203
`
`
`By: /s/ Laura Miller
`
`
`Lisa Pearson
`1114 Avenue of the Americas, 21st Floor
`New York, New York 10036
`Telephone: (212) 775-8700
`Facsimile: (212) 775-8800
`
`Laura Miller
`1001 West Fourth Street
`Winston-Salem, North Carolina 27101-2400
`Telephone: (336) 607-7300
`Facsimile: (336) 607-7500
`
`Attorneys for Opposer, Retail Royalty Company
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`8
`
`
`
`
`
`EXHIBIT A
`EXHIBIT A
`
`9
`
`
`
`Reg. No. 3,878,197
`
`Registered Nov. 16, 2010
`
`RETAL ROYALTY CO1\/[PANY (NEVADA CORPORATION)
`101 CONVEI\TION CENTER DRIVE
`LAS VEGAS, NV 89109
`
`Int. Cls.: 3, 18, 25, and
`35
`
`FOR: AF'l'F,R-SHAVF, I,()'I'IONS, BODY CREAM, C()I,OGNF,, PF,RFUMF,, LIQUID SOAI-’S
`FOR HAND, EACE,AND BODY , IN CLASS 3 (US CLS. 1, 4, 6, 50, 51 AND 52).
`
`TRADEMARK
`
`SERVICE MARK
`
`PRINCIPAL REGISTER
`
`FIRST USE I
`
`-0-2006', TN COMMERCE 10-0-2006.
`
`FOR: ATHLETIC BAGS, BACKPACKS, BARREL BAGS. BEACH BAGS, BOOK BAGS,
`DUFFEL BAGS, SHOULDER BAGS, TOTE BAGS, CLUTCH PURSES, COIN PURSES,
`DRAWSTRING POUCHES, HANDBAGS, PURSES, AND WALLETS, IN CLASS I 8 (U.S. CLS.
`1, 2, 3,22AND41).
`
`FIRST USE 7- -2004', IN COMMERCE 7-0-2004.
`
`2: CLOII IT G AND ACCESSORIES, NAMELY, BLAZ
`FO
`‘RS, V
`* STS, SWEATERS, TUR-
`TL:
`ENECK SWEATERS, SKIRTS, PANTS, EANS, SHORTS, SHIRTS, T—SHIRTS, BLOUSES,
`POEO SHIRTS, RUGBY SHIRTS, SWEATSHI
`RTS, SWEATPANTS; SWIMWEAR‘, SLEEP-
`WEAR‘, UNDERWEAR, NAMELY, BOXER
`SHORI S, SH:LL BRA
`ANKS, AND UNDER-
`SP RIS; OU ERWEAR, NAMELY, JACKETS,
`COATS, PEA COATS, GLOVES,
`VESTS,
`SCARVES; BE
`ITS", FOO'l'WF.AR, NAME] ,Y, SOCKS, SHO
`EIS, SLIPPI-IRS, I,F,A'I'HF,R BOO'l'S,
`SA\IDALS, FLIPFLOPS, SNEAKERS, CLOGSAND SLIDES; CANVAS SHOES, HEADWEAR,
`U.S.
`NAMELY, IIATS, CAPS, BASEBALL CAPS, VISORS, HEADBANDS, IN CLASS 25
`CLS. 22 AND 39).
`
`FIRST USE 8-0-2003', IN COMIVERCE 8-0-2003.
`
`FOR: RETAII. STORE SERVICES, COMPUTER 7ED ONLINE RETAII, STO RE
`SERVICES,
`3S IN TH
`AN3 PHONE ORDER SERVICES ALL FEATURING A WIDE RANGE OF GOO
`NA UR: OF FRAGRANC * S, P *RSONAL CAR3 GOODS‘, SUNGLASSES; J ~w * LRY AND
`WRISTWA'I'CHES', A WIDE RANGE OF BAGS AND WALLETS, HANDBAGS, PURSES,
`D WEARING AP-
`SHOULDER BAGS, SCHOOL BAGS, BACKPACKS, DUFFLE BAGS; AN
`PAREL AND CLOTIIING ACCESSORIES, NAM
`ELY, CLOTHING, HEADWEAR AND
`FOOTWEAR, TN CLASS 35 (US. CLS. 100, 101 AND 102).
`
`Director ofme United Slates Pulem and I':'ademLu'I< Office
`
`FIRST L SE 7-0-2004', IN COMIVIERCE 7-0-2004.
`
`
`
`Reg_ No_ 3,878, 1
`
`SN 78-803,194, FILED 1-31-2006.
`KAREN BRACEY, EXAMINING ATTORNEY
`
`Page: 2 /RN # 3,878,197
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
