Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA717501
`ESTTA Tracking number:
`12/30/2015
`
`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 parties oppose registration of the indicated application.
`Opposers Information
`
`Name
`Granted to Date
`of previous ex-
`tension
`Address
`
`Name
`Granted to Date
`of previous ex-
`tension
`Address
`
`Birmingham Business Alliance
`12/30/2015
`
`505 20th St North, Suite 200
`Birmingham, AL 35203
`UNITED STATES
`
`REV Birmingham, LLC
`12/30/2015
`
`505 20th St. N.Suite 1010
`Birmingham, AL 35203
`UNITED STATES
`
`Attorney informa-
`tion
`
`Alton Parker
`Spain & Gillon, LLC
`2117 Second Avenue North
`Birmingham, AL 35203
`UNITED STATES
`abp@spain-gillon.com
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`86587059
`12/30/2015
`
`Publication date
`Opposition Peri-
`od Ends
`
`09/01/2015
`12/30/2015
`
`Yellowhammer Creative LLC
`3917 2nd Avenue South
`Birmingham, AL 35222
`UNITED STATES
`Goods/Services Affected by Opposition
`
`Class 025. First Use: 2013/01/04 First Use In Commerce: 2013/01/04
`All goods and services in the class are opposed, namely: Short-sleeved t-shirts; T-shirts; Wearable
`garments and clothing, namely, shirts
`
`Grounds for Opposition
`
`Deceptiveness
`False suggestion of a connection
`The mark is merely descriptive
`
`Trademark Act section 2(a)
`Trademark Act section 2(a)
`Trademark Act section 2(e)(1)
`
`
`ESTTA717501
`ESTTA Tracking number:
`12/30/2015
`
`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 parties oppose registration of the indicated application.
`Opposers Information
`
`Name
`Granted to Date
`of previous ex-
`tension
`Address
`
`Name
`Granted to Date
`of previous ex-
`tension
`Address
`
`Birmingham Business Alliance
`12/30/2015
`
`505 20th St North, Suite 200
`Birmingham, AL 35203
`UNITED STATES
`
`REV Birmingham, LLC
`12/30/2015
`
`505 20th St. N.Suite 1010
`Birmingham, AL 35203
`UNITED STATES
`
`Attorney informa-
`tion
`
`Alton Parker
`Spain & Gillon, LLC
`2117 Second Avenue North
`Birmingham, AL 35203
`UNITED STATES
`abp@spain-gillon.com
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`86587059
`12/30/2015
`
`Publication date
`Opposition Peri-
`od Ends
`
`09/01/2015
`12/30/2015
`
`Yellowhammer Creative LLC
`3917 2nd Avenue South
`Birmingham, AL 35222
`UNITED STATES
`Goods/Services Affected by Opposition
`
`Class 025. First Use: 2013/01/04 First Use In Commerce: 2013/01/04
`All goods and services in the class are opposed, namely: Short-sleeved t-shirts; T-shirts; Wearable
`garments and clothing, namely, shirts
`
`Grounds for Opposition
`
`Deceptiveness
`False suggestion of a connection
`The mark is merely descriptive
`
`Trademark Act section 2(a)
`Trademark Act section 2(a)
`Trademark Act section 2(e)(1)
`
`
`
`The mark is deceptively misdescriptive
`The mark is primarily geographically descriptive
`The mark is primarily geographically deceptively
`misdescriptive
`Torres v. Cantine Torresella S.r.l.Fraud
`
`Trademark Act section 2(e)(1)
`Trademark Act section 2(e)(2)
`Trademark Act section 2(e)(3)
`
`808 F.2d 46, 1 USPQ2d 1483 (Fed. Cir. 1986)
`
`Mark Cited by Opposer as Basis for Opposition
`
`U.S. Application/ Registra-
`tion No.
`Registration Date
`Word Mark
`Goods/Services
`
`NONE
`
`Application Date
`
`NONE
`
`NONE
`Phrase IT'S NICE TO HAVE YOU IN BIRMINGHAM
`The phrase appears on various buttons, stickers, and other articles in-
`cluding automobile license plates in the Birmingham area. Such mem-
`orabilia has remained in continuous use since that time. The phrase
`IT#S NICE TO HAVE YOU IN BIRMINGHAM has been used to wel-
`come people coming to Birmingham through the Birmingham
`AmTrack Station, Greyhound Station and the Birmingham Airport. The
`phrase has also been used in historic context on Rickwood Field, the
`oldest baseball park in the country, on automobile tags as early as the
`1970#s, and has more recently been used on a number of murals
`throughout Birmingham. Beginning in 2007, increased usage of the
`stylized slogan by individuals and entities other than Applicant stimu-
`lated renewed civic and community interest, popularity, and pride.
`
`Related Proceed-
`ings
`
`86587120
`
`Attachments
`
`2015.12.30 - Opposition (86-587059) - FINAL.pdf(254389 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
`
`/Alton Parker/
`Alton Parker
`12/30/2015
`
`
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE
`
`TRADEMARK TRIAL AND APPEAL BOARD
`
`In the matter of Application Serial No. 86/587059
`Published in the Official Gazette of September 1, 2015
`
`
`THE BIRMINGHAM BUSINESS
`ALLIANCE,
`
`
`
`
`
`
`
`Opposer,
`
`
`
`
`and
`
`
`
`REV BIRMINGHAM, INC.,
`
`
`
`
`Opposer,
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`v.
`
`
`
`
`YELLOWHAMMER CREATIVE, LLC,
`
`
`
`
`Applicant.
`
`
`
`) Trademark Application
`)
`) Mark: IT’S NICE TO HAVE
`) YOU IN BIRMINGHAM
`)
`)
`)
`) Serial No. 86/587059
`)
`)
`) Filed: April 3, 2015
`)
`)
`) Published: September 1, 2015
`)
`)
`)
`) Opposition No. _______________
`)
`
`
`
`
`
`NOTICE OF OPPOSITION
`
`Honorable Commissioner for Trademarks
`Box 1451
`Alexandria, VA 22313-1451
`
`
`In the matter of Trademark Application Serial No. 86/587059 for the mark IT’S
`
`NICE TO HAVE YOU IN BIRMINGHAM filed April 3, 2015, and published for
`
`opposition in the Official Gazette of September 1, 2015 (herein referred to as the “Mark”).
`
`
`
`1
`
`
`
`The Birmingham Business Alliance is an Alabama nonprofit corporation having an
`
`address of 505 20th Street North, Suite 200, Birmingham, Alabama 35203 (“BBA” or
`
`“Opposer”). The BBA was created by the merger of the Birmingham Regional Chamber of
`
`Commerce and the Metropolitan Development Board and is a successor in interest to each.
`
`The BBA is an economic development organization focused on the economic growth and
`
`the marketing of the entire seven county Birmingham region with a goal to promote
`
`dynamic growth and to improve the quality of life in the region. The BBA is responsible for
`
`implementing and administering the region’s economic development strategy and to develop
`
`a more prosperous region by focusing on business retention and expansion, marketing and
`
`recruitment, and small business development and entrepreneurship. In order to achieve
`
`these objectives, the BBA has committed to enhance the Birmingham region’s marketing
`
`and public relations efforts.
`
`REV Birmingham is an Alabama nonprofit corporation having an address of 505 20th
`
`Street North, Suite 1010, Birmingham, Alabama 35203 (“REV” or “Opposer”) (REV and
`
`BBA may collectively be referred to as “Opposers”). REV was formed in 2012 by the
`
`strategic merger of Operation New Birmingham, an Alabama nonprofit, and Main Street
`
`Birmingham, an Alabama nonprofit, and serves as an economic and catalytic development and
`
`commercial revitalization organization within the City of Birmingham, Alabama. REV’s
`
`mission as an economic development organization is to stimulate business growth and
`
`improve the quality of life in the City of Birmingham’s City Center and its Neighborhood
`
`Commercial Centers.
`
`REV and the BBA are filing this opposition to the trademark applied for above to
`
`protect and preserve the phrase IT’S NICE TO HAVE YOU IN BIRMINGHAM for the
`
`
`
`2
`
`
`
`public’s benefit and use. Opposers believe they will be damaged by registration of the Mark
`
`shown in the above-identified application for the products identified therein and hereby
`
`opposes the same.
`
`SUMMARY OF THE OPPOSITION
`
`The stylized slogan IT’S NICE TO HAVE YOU IN BIRMINGHAM was initially
`
`designed during the 1950’s and popularized by a committee of the Birmingham Chamber of
`
`Commerce (predecessor to the Birmingham Regional Chamber of Commerce), and other civic
`
`groups, including the Young Men’s Business Club, the Birmingham Jaycees, and the
`
`Downtown Action Committee, the merchant’s association for downtown Birmingham.
`
`Since that time, it has been broadly used on buttons, stickers, and other articles including
`
`automobile license plates. Such memorabilia has remained in continuous use since that time.
`
`The phrase IT’S NICE TO HAVE YOU IN BIRMINGHAM has been used to welcome
`
`people coming to Birmingham through the Birmingham AmTrack Station, Greyhound
`
`Station and the Birmingham Airport. The phrase has also been used in historic context on
`
`Rickwood Field, the oldest baseball park in the country, on automobile tags as early as the
`
`1970’s, and has more recently been used on a number of murals throughout Birmingham.
`
`Beginning in 2007, increased usage of the stylized slogan by individuals and entities other than
`
`Applicant stimulated renewed civic and community interest, popularity, and pride.
`
`The Applicant, Yellowhammer Creative, LLC (“Applicant” or “Yellowhammer”) did
`
`not create the phrase IT’S NICE TO HAVE YOU IN BIRMINGHAM, does not own it, and
`
`the Mark has no special relationship to Yellowhammer which would identify Applicant as
`
`the sole source of the Mark.
`
`
`
`3
`
`
`
`Accordingly, on information and belief, REV and the BBA file this opposition and as
`
`further grounds therefor would show as follows:
`
`1. Yellowhammer is a design firm created in 2012 specializing in the design and
`
`production of screen printed T-shirts and posters. Yellowhammer began using the stylized
`
`slogan IT’S NICE TO HAVE YOU IN BIRMINGHAM on its T- shirts and other media in
`
`2013.
`
`2. Yellowhammer seeks to register IT’S NICE TO HAVE YOU IN BIRMINGHAM
`
`as a Mark for various types of shirts, including t-shirts, as evidenced by the publication of the
`
`Mark in the Official Gazette of September 1, 2015.
`
`3. Yellowhammer also seeks to register IT’S NICE TO HAVE YOU IN
`
`BIRMINGHAM as a Mark for various types of art prints, including murals and posters, as
`
`evidenced by the publication of an alleged companion Mark, Serial No. 86/587120, in the
`
`Official Gazette of September 1, 2015, which REV and the BBA also oppose.
`
`4.
`
`In view of the stylized slogan’s origin, history and common usage by multiple
`
`individuals and entities over the last fifty years, it cannot function as a trademark for Applicant’s
`
`products because it does not identify a single source of origin for such products.
`
`5. The slogan IT’S NICE TO HAVE YOU IN BIRMINGHAM was initially used
`
`by the Birmingham Chamber of Commerce and other civic groups in the 1950s and 1960s
`
`and by many other public and private entities since that time and, at least as early as 1971
`
`through the present, residents of Birmingham have used the slogan on ornamental vehicle
`
`license plates.
`
`
`
`4
`
`
`
`6.
`
`Since its initial use, the slogan has been used in various capacities by residents,
`
`organizations, and entities, including the BBA and REV, to market and promote the area and
`
`region in and around Birmingham, Alabama.
`
`7.
`
`In 2010, the slogan was placed by a community organization upon a mural at
`
`Rickwood Field in Birmingham, Alabama, where it is still located.
`
`8.
`
`In Applicant’s application to the United States Patent and Trademark Office
`
`(“USPTO”), Applicant declared: “The signatory believes that to the best of the signatory's
`
`knowledge and belief, no other person has the right to use the Mark in commerce, either in
`
`the identical form or in such near resemblance as to be likely, when used on or in connection
`
`with the goods/services of such other person, to cause confusion or mistake, or to deceive.”
`
`9. Various entities in the Birmingham area, both public, nonprofit, and others for
`
`over a half-century have used the slogan IT’S NICE TO HAVE YOU IN BIRMINGHAM
`
`prior to and contemporaneously with Applicant’s use of the alleged Mark.
`
`10. Applicant did not create the alleged Mark in as much as the alleged Mark had
`
`been in the public domain for over a half century.
`
`11. Applicant had knowledge that others were using and had the right to use the
`
`slogan IT’S NICE TO HAVE YOU IN BIRMINGHAM at the time of its application.
`
`12. In view of the history of the slogan, consumers will not perceive the slogan
`
`IT’S NICE TO HAVE YOU IN BIRMINGHAM as applied to Applicant’s goods as a
`
`source indicator pointing uniquely to Applicant, but rather as an informational slogan
`
`commonly used by multiple individuals and entities.
`
`
`
`5
`
`
`
`13. The prominent display of Applicant’s alleged Mark on its own products
`
`indicates that the slogan would be viewed as an ornamental message rather than as a
`
`trademark identifying the source of Applicant’s products.
`
`14. Thus, Applicant’s alleged Mark does not function as a trademark for its
`
`products because it does not identify applicant as the single source of origin for such
`
`products pursuant to 15 U.S.C. § 1052(a).
`
`15. The primary significance of the alleged Mark is a generally known geographic
`
`location where the goods originate.
`
`16. Thus, Applicant’s alleged Mark does not function as a trademark for its
`
`products and services because it is primarily geographically descriptive of them pursuant to
`
`15 U.S.C. § 1052(e).
`
`17. If Applicant is able to obtain registration for the Mark which is the subject of
`
`this Notice of Opposition, the BBA, REV, other opposers, and the public would be damaged
`
`because they would be limited in their ability to use the slogan IT’S NICE TO HAVE YOU
`
`IN BIRMINGHAM as it has been used to market and promote the City of Birmingham and
`
`the region. BBA and REV affirm that usage of the slogan is emblematic of the civic pride
`
`necessary to furthering the goals and objectives of their respective reorganizations.
`
`18. The registration which is the subject of this Opposition would be a source of
`
`damage and injury to BBA, REV and others who use and have a right to use a commonly
`
`used and informational slogan about their city.
`
`
`
`6
`
`
`
`WHEREFORE, the Birmingham Business Alliance and REV Birmingham, as
`
`Opposers, pray that registration of the Mark of Application Serial No. 86/587059 be denied,
`
`and that this Opposition be sustained.
`
`Date: December 30, 2015
`
`Respectfully submitted,
`
`Alton B. Parker, Jr.
`By: /s/
` Alton B. Parker, Jr.
` Attorney for REV Birmingham, Inc. and
` The Birmingham Business Alliance
`
`OF COUNSEL:
`SPAIN & GILLON, LLC
`The Zinszer Building
`2117 2nd Avenue North
`Birmingham, Alabama 35203
`Telephone: (205) 328-4100
`Facsimile: (205) 324-8866
`abp@spain-gillon.com
`
`
`
`
`7
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a true and correct copy of the attached Notice of
`Opposition was served on the counsel for the Applicant via U.S. Mail on this day, December
`30, 2015:
`
`
`
`
`
`
`
`Mr. Andrew Wheeler-Berliner
`The Berliner Firm
`1710 2nd Ave. N., Ste 404
`Birmingham, AL 35203
`
`
`
`/s/
`
`
`Alton B. Parker, Jr.
`
`CERTIFICATE OF TRANSMITTAL
`
`
`
`I hereby certify that a true copy of the foregoing NOTICE OF OPPOSITION is being
`filed electronically with the TTAB via ESTTA on this day, December 30, 2015.
`
`
`
`/s/
`
`
`Alton B. Parker, Jr.
`
`
`
`8
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