throbber
Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA710619
`ESTTA Tracking number:
`11/24/2015
`
`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
`
`Dallas Austin
`11/25/2015
`
`576-A Trabert Avenuec/o Darp. Inc.
`Atlanta, GA 30309
`UNITED STATES
`
`Attorney informa-
`tion
`
`Joel R. Feldman and Jacquelynne J. Regan
`Greenberg Traurig, LLP
`3333 Piedmont Rd, NE Suite 2500
`Atlanta, GA 30305
`UNITED STATES
`atltrademark@gtlaw.com, feldmanjoel@gtlaw.com, reganj@gtlaw.com
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`86538712
`11/24/2015
`
`Publication date
`Opposition Peri-
`od Ends
`
`07/28/2015
`11/25/2015
`
`Smith, Carlos A.
`600 l. Crisp
`Middleton, TN 38052
`UNITED STATES
`Goods/Services Affected by Opposition
`
`Class 018. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: All purpose sport bags; All-purpose athletic
`bags; All-purpose carrying bags; All-purpose reusable carrying bags; Backpacks; Backpacks, book
`bags, sports bags,bum bags, wallets and handbags; Courierbags; Duffle bags; Flight bags; Gym
`bags; Handbags; Purses; Purses; Small backpacks; Small bags for men; Tote bags; Travel bags;
`Traveling bags; Wallets
`
`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
`
`3410293
`
`04/08/2008
`
`Application Date
`
`05/10/2004
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Word Mark
`Design Mark
`
`ROWDY
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 025. First use: First Use: 2007/10/00 First Use In Commerce: 2007/10/00
`Clothing, namely, shirts, T-shirts, jackets, sweatshirts, [ and underwear, ] * all
`not for use in connection with sports, sporting events, and sports teams *
`
`U.S. Registration
`No.
`Registration Date
`
`4022937
`
`09/06/2011
`
`Word Mark
`Design Mark
`
`ROWDY
`
`Application Date
`
`10/31/2006
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 025. First use: First Use: 2005/00/00 First Use In Commerce: 2005/00/00
`Clothing and sportswear, namely, shirts, T-shirts, sweatshirts, dress shirts, jer-
`seys, underwear, sweaters, shorts, pants, footwear, hats, caps, jackets, belts, all
`not for use in connection with sports, sporting events, and sports teams
`
`U.S. Registration
`No.
`
`3588455
`
`Application Date
`
`11/27/2007
`
`

`
`Registration Date
`
`03/10/2009
`
`Word Mark
`Design Mark
`
`R ROWDY
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`The mark consists of a stylized letter "R" with a crown above, wings and stars on
`either side, and the word "Rowdy" beneath.
`Class 025. First use: First Use: 2008/02/00 First Use In Commerce: 2008/02/00
`Clothing, namely, t-shirts, sweatshirts; headwear, namely, caps, hats, bandanas;
`and footwear
`
`Attachments
`
`78416244#TMSN.png( bytes )
`77033343#TMSN.png( bytes )
`77338214#TMSN.png( bytes )
`ROWDY GAL Notice of Opp - 20949490_1.pdf(197286 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
`Name
`Date
`
`/Jacquelynne J. Regan/
`Jacquelynne J. Regan
`11/24/2015
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition No. __________________
`
`
`Mark: ROWDY GAL
`Serial Number: 86/538,712
`Filed: February 18, 2015
`Published: July 28, 2015
`
`))
`
`))
`
`)
`
`))
`
`
`)
`)
`)
`)
`
`Dallas Austin,
`
`
`
`Opposer,
`
`v.
`
`Carlos Smith,
`
`
`
`Applicant.
`
`NOTICE OF OPPOSITION
`
`Dallas Austin, by and through his undersigned attorneys, hereby opposes the
`
`application for registration of the mark ROWDY GAL filed by Carlos Smith bearing Serial
`
`No. 86/538,712 for the reason that he will be damaged by the Application.
`
`As grounds for opposition, it is alleged that:
`
`OPPOSER’S USE AND REGISTRATION
`OF THE ROWDY BRAND
`
`1.
`
`Opposer Dallas Austin (hereinafter “Opposer”) is a United States citizen
`
`with a principal address at 576-A Trabert Avenue, Atlanta, Georgia 30309.
`
`2.
`
`Opposer is the acclaimed songwriter and music producer, Dallas Austin,
`
`owner of the world-renowned Rowdy Records music label. Opposer has expended
`
`considerable time, effort and resources building the ROWDY brand, which, over the years,
`
`has encompassed a wide range of goods and services, including sound and video
`
`recordings, clothing, backpacks, and retail store services. To protect the ROWDY brand,
`
`- 1 -
`
`

`
`Opposer has filed for and received several federal trademark and service mark registrations
`
`for the ROWDY mark.
`
`3.
`
`Opposer owns Registration No. 3,410,293 for the mark ROWDY in
`
`International Class 25 for clothing, namely, shirts, T-shirts, jackets, and sweatshirts, all not
`
`for use in connection with sports, sporting events, and sports teams, based upon use in
`
`commerce as early as 2007.
`
`4.
`
`Opposer owns Registration No. 4,022,937 for the mark ROWDY in
`
`International Class 25 for clothing and sportswear, namely, shirts, T-shirts, sweatshirts,
`
`dress shirts, jerseys, underwear, sweaters, shorts, pants, footwear, hats, caps, jackets, belts,
`
`all not for use in connection with sports, sporting events, and sports teams, based upon use
`
`in commerce as early as 2005.
`
`5.
`
`Opposer owns Registration No. 3,588,455 for the stylized mark R ROWDY
`
`& Design in International Class 25 for clothing, namely, t-shirts, sweatshirts; headwear,
`
`namely, caps, hats, bandanas; and footwear, based upon use in commerce as early as 2008.
`
`6.
`
`By virtue of Opposer’s continuous, exclusive, and widespread use of the
`
`foregoing ROWDY marks, Opposer is entitled to a broad scope of protection for these
`
`marks.
`
`7.
`
`Opposer has, beginning as early as 2005, used the trademark ROWDY in
`
`interstate commerce on and in connection with clothing and headwear. Over the years,
`
`Opposer’s ROWDY brand has included a wide variety of merchandise including
`
`backpacks, as well as ROWDY retail outlets in Atlanta, Georgia.
`
`- 2 -
`
`

`
`8.
`
`Opposer is well and favorably known, and has built up valuable goodwill
`
`and reputation in the ROWDY mark by virtue of his investment of a great deal of time and
`
`money in promoting his goods under the ROWDY mark, trade name and brand. Opposer
`
`continues to use and promote these goods under the ROWDY mark. As such, the ROWDY
`
`mark has national prominence due to its connection with the world famous producer Dallas
`
`Austin and the extensive advertising and marketing conducted to promote the relevant
`
`goods, including the advertising of such goods on the Internet.
`
`9.
`
`By virtue of Opposer’s continuous, exclusive, and widespread use of the
`
`ROWDY mark, Opposer is entitled to a broad scope of protection therefor.
`
`APPLICANT’S HISTORY AND
`ROWDY GAL APPLICATION
`
`10.
`
`Upon
`
`information and belief, Applicant, Carlos Smith (hereinafter
`
`“Applicant”), is a United States citizen with an address at 600 I. Crisp, Middleton,
`
`Tennessee 38052.
`
`11.
`
`Applicant filed the Application for the ROWDY GAL mark in Class 18 on
`
`February 18, 2015, based on Applicant’s intent to use the mark on the applied-for goods in
`
`commerce.
`
`12.
`
`Applicant seeks to register the ROWDY GAL mark in International Class
`
`18 for all purpose sport bags; all-purpose athletic bags; all-purpose carrying bags; all-
`
`purpose reusable carrying bags; backpacks; backpacks, book bags, sports bags, bum bags,
`
`wallets and handbags; courier bags; duffle bags; flight bags; gym bags; handbags; purses;
`
`purses; small backpacks; small bags for men; tote bags; travel bags; traveling bags;
`
`wallets.
`
`- 3 -
`
`

`
`13.
`
`Upon information and belief, Applicant has never used the ROWDY GAL
`
`mark in commerce for the applied-for goods.
`
`14.
`
`Applicant has, however, used the ROWDY GAL mark on related goods,
`
`including T-shirts, which are offered for sale on Applicant’s website, www.rowdygal.com.
`
`15.
`
`Notwithstanding Opposer’s established rights in the ROWDY mark, and
`
`most notably, Opposer’s prior registrations of the ROWDY mark in Class 25, discussed
`
`supra, Applicant began using the ROWDY GAL mark on clothing at least as early as April
`
`2014.
`
`16.
`
`Further, on October 28, 2014, Applicant filed application Serial No.
`
`86/436,547 for the ROWDY GAL mark for use with bandanas, belts, blouses, coats,
`
`denims, dresses, footwear, hats, jackets, leggings, pants, scarves, shorts, socks, sweaters,
`
`sweatpants, swimwear, t-shirts, tank tops, and undergarments in Class 25.
`
`17.
`
`Applicant’s application Serial No. 86/436,547 for the ROWDY GAL mark
`
`in Class 25 was rejected because of a likelihood of confusion with Opposer’s U.S.
`
`Registration Nos. 3,410,293, 3,588,455, and 4,022,937, all for the ROWDY mark.
`
`18.
`
`Upon information and belief, Applicant was aware of Opposer’s ROWDY
`
`mark and Opposer’s existing registrations of the mark in Class 25 when Applicant filed his
`
`application for use of the ROWDY GAL mark in Class 18.
`
`19.
`
`Applicant’s ROWDY GAL mark is substantially similar to Opposer’s
`
`registered mark ROWDY.
`
`20.
`
`The goods for which Opposer has registered the ROWDY mark in Class 25
`
`(“Opposer’s Class 25 Goods”) and the goods designated by Applicant in seeking
`
`- 4 -
`
`

`
`registration of the ROWDY GAL mark (“Applicant’s Class 18 Goods”) are related.
`
`Clothing and handbags, backpacks and other such personal bags are often sold side-by-side
`
`within the same brand. The public is well aware of this practice and will quickly associate
`
`Applicant’s use of the ROWDY GAL mark on handbags and backpacks with Opposer’s
`
`ROWDY brand of clothing.
`
`21.
`
`Applicant’s Class 18 Goods are within the reasonable zone of expansion of
`
`Opposer’s business conducted under the mark ROWDY and Opposer has the legal right to
`
`expand his use into products and services related to his mark.
`
`22.
`
`In fact, Opposer has already expanded his use of the mark into Class 18 on
`
`various occasions in the past, using the ROWDY mark in connection with backpacks and
`
`other Class 18 goods.
`
`23.
`
`Applicant’s ROWDY GAL mark is also suggestive as a women-specific
`
`line of goods associated with Opposer’s ROWDY Marks. Notably, Opposer previously
`
`used the ROWDY GIRL mark for clothing. The confusion and association between
`
`Applicant’s ROWDY GAL mark and Opposer’s ROWDY mark is further compounded by
`
`this fact.
`
`24. Moreover, the fact that Applicant is already using the substantially similar
`
`ROWDY GAL mark in connection with Opposer’s Class 25 Goods, without permission
`
`from Opposer, and sought to register the mark underscores the relatedness of such goods
`
`and the potential for customer confusion.
`
`25.
`
`If Applicant were permitted to register and use the ROWDY GAL mark, as
`
`specified in his application, confusion in trade and in the minds of the public resulting in
`
`- 5 -
`
`

`
`injury to the Opposer would likely result and the significant investment Opposer has made
`
`in his well-known ROWDY trademark would be diminished. Persons familiar with
`
`Opposer’s mark would likely mistake Applicant's goods for those provided by Opposer or
`
`at least believe Applicant’s goods were sanctioned, authorized, licensed by or related to
`
`Opposer. Furthermore, any defect, objection or fault found with Applicant’s goods
`
`marketed under his mark would likely reflect upon and injure the reputation Opposer has
`
`established with respect to the services and products sold under his aforementioned mark.
`
`26.
`
`Use or application for registration by Applicant of the ROWDY mark is
`
`without Opposer’s consent.
`
`COUNT I
`LIKELIHOOD OF CONFUSION
`
`27.
`
`Applicant’s applied-for ROWDY GAL mark fully incorporates and closely
`
`resembles Opposer’s ROWDY mark.
`
`28.
`
`Upon information and belief, Opposer has clear priority over Applicant’s
`
`desired ROWDY GAL mark. Opposer’s current registrations for the ROWDY mark for
`
`clothing registered as early as 2008, noting use as early as 2005, which long precedes
`
`Applicant’s 2015 filing date for his intent-to-use application.
`
`29.
`
`Applicant’s use and/or registration of the ROWDY GAL mark in
`
`connection with Applicant’s Class 18 Goods is likely to cause confusion, mistake, or
`
`deception with Opposer’s ROWDY mark within the meaning of Section 2(d) of the
`
`Trademark Act, 15 U.S.C. § 1052(d).
`
`- 6 -
`
`

`
`30.
`
`Registration of the ROWDY GAL mark by Applicant would provide
`
`Applicant with prima facie evidence of its validity and his exclusive rights therein. Such
`
`registration would be a source of damage and injury to the Opposer.
`
`31.
`
`32.
`
`Applicant’s applied-for goods are closely related to Opposer’s goods.
`
`Based on the similarity of the Applicant’s and Opposer’s marks and the
`
`relatedness of Applicant’s Class 18 Goods and Opposer’s Class 25 Goods, the public is
`
`likely to incorrectly believe that Applicant’s applied-for goods are connected to Opposer.
`
`This is compounded by the fact that Applicant is currently using the ROWDY GAL mark
`
`on Opposer’s Class 25 goods without permission from Opposer. This confusion will cause
`
`irreparable damage to Opposer.
`
`33.
`
`Likelihood of confusion in this case is enhanced by the fact that Applicant’s
`
`ROWDY GAL mark is suggestive as a women-specific line of goods associated with
`
`Opposer’s ROWDY Marks, and further compounded by Opposer’s prior use of the mark
`
`ROWDY GIRL for clothing.
`
`34.
`
`Applicant’s applied-for mark is not registrable under 15 U.S.C. § 1052(d),
`
`because it resembles a mark previously used in the United States by Opposer and is likely
`
`to cause confusion, mistake, or to deceive.
`
`35.
`
`Opposer has the right to continue to use the ROWDY mark in commerce
`
`without interference by Applicant, and without a likelihood of confusion, mistake, or
`
`deception.
`
`- 7 -
`
`

`
`WHEREFORE Opposer prays that this Opposition be granted and that Applicant’s
`
`application for registration of the alleged mark ROWDY GAL shown in Application Serial
`
`No. 86/538,712 be denied.
`
`Respectfully submitted,
`
`Dated: November 24, 2015
`
`By: ______________________
`
`Joel R. Feldman, Esq.
`Jamie Nordhaus Shipp, Esq.
`Jacquelynne L. Regan, Esq.
`GREENBERG TRAURIG
`3333 Piedmont Road NE
`Suite 2500
`Atlanta, GA 30305
`(678) 553-2424 Telephone
`(678) 553-2256 Facsimile
`
`Attorneys for Opposer
`DALLAS AUSTIN
`
`- 8 -
`
`

`
`CERTIFICATE OF ELECTRONIC TRANSMISSION
`
`Date: November 24, 2015
`
`I certify that this Notice of Opposition is being transmitted electronically to the
`
`Trademark Trial and Appeal Board of the United States Patent & Trademark Office, on the
`
`date indicated above, through the ESTTA electronic filing system at the web site
`
`http://estta.uspto.gov/.
`
`______________________________
`Jacquelynne L. Regan, Esq.
`
`CERTIFICATE OF SERVICE
`
`I certify that on November 24, 2015 I served this Notice of Opposition by U.S.
`
`first-class mail, addressed to Applicant’s counsel of record as follows:
`
`Liel Hollander, Esq.
`Hollander Law, P.C.
`10 Bond St., Ste 420
`Great Neck, NY 11021-2454
`
`______________________________
`Jacquelynne L. Regan, Esq.
`
`- 9 -

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