Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA724525
`02/03/2016
`
`ESTTA Tracking number:
`
`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
`
`Under Armour, Inc.
`
`Granted to Date
`of previous ex-
`tension
`
`Address
`
`02/17/2016
`
`1020 Hull Street
`Baltimore, MD 21230
`UNITED STATES
`
`Attorney informa-
`tion
`
`Douglas A. Rettew
`Finnegan Henderson Farabow Garrett & Dunner, LLP
`901 New York Avenue, NW
`Washington, DC 20001
`UNITED STATES
`docketing@finnegan.com, doug.rettew@finnegan.com,
`danny.awdeh@finnegan.com, anna.naydonov@finnegan.com, TTAB-Leg-
`al-Assistants@finnegan.com Phone:202-408-4000
`
`Applicant Information
`
`Application No
`
`86648447
`
`Publication date
`
`10/20/2015
`
`Opposition Filing
`Date
`
`Applicant
`
`02/03/2016
`
`Portafit
`902 1st ct
`Brooklyn, NY 11223
`UNITED STATES
`
`Opposition Peri-
`od Ends
`
`02/17/2016
`
`Goods/Services Affected by Opposition
`
`Class 009. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Cell phone cases; Eyewear; Scales
`
`Class 014. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Sports watches; Stop watches; Wrist
`watches
`
`Class 018. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Backpacks; Luggage
`
`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, jack-
`ets, footwear, hats and caps, athletic uniforms; Headwear; Socks; Swimwear
`
`Class 028. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Exercise equipment, namely, exercise
`balls, exercise bars, strength training, yoga accessories, running and hydration accessories, sports
`braces; Waist trimmerexercise belts; Weight lifting belts; Work-out gloves
`
`

`
`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.
`
`4076189
`
`Registration Date
`
`12/27/2011
`
`Word Mark
`
`Design Mark
`
`UA
`
`Application Date
`
`12/09/2010
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 025. First use: First Use: 1996/08/05 First Use In Commerce: 1996/08/05
`Full line of athletic clothing; shirts;tops; t-shirts; tank tops; athletic uniforms;
`fleece pullovers; hooded pullovers; hooded sweat shirts; knit shirts; long-sleeved
`shirts; moisture-wicking sports shirts; polo shirts; short-sleeved shirts; sleeveless
`jerseys; sports jerseys;sport shirts; sports shirts; sweat shirts; undershirts; wind
`shirts; beachwear;fishing shirts; sweaters; pants; sweat pants; skirts; skorts; leg-
`gings; dresses; shorts; bottoms; bib overalls; capri pants; moisture-wicking
`sports pants; rain trousers; unitards; waterproof pants; wind pants; jogging
`pants; underwear; bras; baselayer bottoms; baselayer tops; boxer briefs; boxer
`shorts; briefs; ladies' underwear; men's underwear; moisture-wicking sports
`bras; sports bras; underwear, namely, thongs; underwear, namely, boy shorts;
`headwear; hats; headbands; hoods; skull caps; skull wraps; children's head-
`wear; headwear, namely, visors; bandanas; scarves; beanies; caps; bucket
`hats; neck gaiters; wristbands; sweat bands; jackets; rain jackets; rainproof jack-
`ets; rainwear; waterproof jackets; windresistant jackets; vests; coats; foul weath-
`er gear; socks; men's socks; men's dress socks; gloves; mittens; belts; clothing,
`namely, hand-warmers; Clothing forathletic use, namely, padded shirts, padded
`pants, padded shorts, padded elbow compression sleeves being part of an ath-
`letic garment; ankle socks; footwear; athletic footwear; beach footwear; running-
`shoes; footwear, namely, thongs; training shoes; cleats for attachment to sports
`shoes; sneakers; sandals; golf shirts;golf trousers; golf shorts; football shoes;
`football cleats; baseball shoes; baseball uniforms; baseball caps; baseballcleats;
`softball cleats; hunting vests;hunting jackets; hunting pants; huntingshirts; bib
`overalls for hunting; camouflage gloves; camouflage jackets; camouflage pants;
`camouflage shirts; camouflage vests; camouflage leggings; camouflageunder-
`wear; ski bibs; ski gloves; ski jackets; ski pants; ski wear; ski socks; snow pants;
`snowboard gloves; snowboard pants; snowboard socks; soccer boots; soccer
`goalkeeper jerseys; tennis wear; basketball sneakers; volleyball jerseys;
`lacrosse cleats
`
`U.S. Registration
`No.
`
`4063401
`
`Application Date
`
`05/05/2011
`
`

`
`Registration Date
`
`11/29/2011
`
`Word Mark
`
`Design Mark
`
`UA
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 035. First use: First Use: 2000/07/07 First Use In Commerce: 2000/07/07
`Online retail store services featuring apparel, footwear, sporting goods, eye-
`wear, sunglasses, headwear, towels, tote bags, travel bags, backpacks, mes-
`senger bags, duffel bags, shoe bags for travel, toiletry bags sold empty, wheeled
`bags, waist packs, sling bags, umbrellas, sports bottles sold empty, wrist bands,
`sweat bands, belts, gloves, hand-warmers, lanyards for holding mouthpieces,
`water bottles, eyeglasses, sunglasses, badges, event tickets, flashlights, or
`keys; Retail store services featuring apparel, footwear, sporting goods, eyewear,
`sunglasses, headwear, towels, tote bags, travel bags, backpacks, messenger
`bags, duffel bags, shoe bags for travel, toiletry bags sold empty, wheeled bags,
`waist packs,sling bags, umbrellas, sports bottles sold empty, wrist bands, sweat
`bands, belts, gloves, hand-warmers, lanyards for holding mouthpieces, water
`bottles, eyeglasses, sunglasses, badges, event tickets, flashlights, or keys; Mo-
`bile retail store services featuring apparel, footwear, sporting goods, eyewear,
`sunglasses, headwear, towels, tote bags, travel bags,backpacks, messenger
`bags, duffel bags,shoe bags for travel, toiletry bags sold empty, wheeled bags,
`waist packs, sling bags, umbrellas, sports bottles sold empty, wrist bands, sweat
`bands, belts, gloves, hand-warmers, lanyards for holding mouthpieces, water
`bottles, eyeglasses, sunglasses, badges, event tickets, flashlights, or keys
`
`U.S. Registration
`No.
`
`3897910
`
`Registration Date
`
`12/28/2010
`
`Word Mark
`
`Design Mark
`
`UA
`
`Application Date
`
`09/03/2009
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`NONE
`
`Goods/Services
`
`Class 009. First use: First Use: 2009/09/25 First Use In Commerce: 2009/09/25
`
`

`
`Baseball and softball equipment for catchers, namely, catchers' helmets
`Class 028. First use: First Use: 2006/01/12 First Use In Commerce: 2006/01/12
`GOLF BAGS; BAGS SPECIALLY ADAPTED FOR SPORTS EQUIPMENT;
`GOLF GLOVES; BATTING GLOVES; FOOTBALL GLOVES; LACROSSE
`GLOVES; CASES FOR HOLDING MOUTH GUARDS FOR ATHLETIC USE;
`FOOTBALL GIRDLES; PROTECTIVE ATHLETIC CUPS; JOCK STRAPS;
`BASEBALL BAT BAGS; FIELD HOCKEY GLOVES; FIELD HOCKEY STICK
`BAGS; LACROSSE STICK BAGS; RUNNING GLOVES; SOFTBALL BAT
`BAGS; BASEBALL AND SOFTBALL EQUIPMENT FOR CATCHERS,
`NAMELY,FACE MASKS, CHEST PROTECTORS, LEG GUARDS, PROTECT-
`IVE KNEE SUPPORTS, AND REPLACEMENT PARTS FOR THE FOREGOING
`GOODS; ATHLETIC EQUIPMENT, NAMELY, MOUTH GUARDS, GUARDS
`FOR THE LIPS, CHIN PADS, KNEE PADS,ELBOW PADS, FOREARM PADS,
`AND SHIN GUARDS, EXCLUDING THOSE GOODS AS USED IN CONNEC-
`TION WITH SKATEBOARDING
`
`U.S. Registration
`No.
`
`3831854
`
`Registration Date
`
`08/10/2010
`
`Word Mark
`
`Design Mark
`
`UA
`
`Application Date
`
`01/22/2010
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 018. First use: First Use: 2003/10/07 First Use In Commerce: 2003/10/07
`Toiletry kit bags, sold empty; sport bags; travel bags; duffel bags; back-
`packs;sack pacs; reservoir backpacks; all purpose sport bags; all-purpose ath-
`letic bags; athletic bags; bags for sports; daypacks; golf umbrellas; hiking bags;
`shoe bags for travel; umbrellas; messenger bags; tote bags; wristlet bags;
`briefcases; wheeled bags; bags and holdalls for sports clothing; hunting bags
`
`U.S. Registration
`No.
`
`4535456
`
`Registration Date
`
`05/27/2014
`
`Word Mark
`
`UA
`
`Application Date
`
`01/03/2011
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 016. First use: First Use: 2001/09/00 First Use In Commerce: 2001/09/00
`Stickers
`
`U.S. Registration
`No.
`
`3974721
`
`Registration Date
`
`06/07/2011
`
`Word Mark
`
`Design Mark
`
`UA
`
`Application Date
`
`01/03/2011
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 022. First use: First Use: 2001/10/00 First Use In Commerce: 2001/10/00
`Lanyards for holding mouthpieces, waterbottles, eyeglasses, sunglasses,
`badges, event tickets, flashlights, or keys
`
`U.S. Registration
`No.
`
`3950203
`
`Registration Date
`
`04/26/2011
`
`Word Mark
`
`UA
`
`Application Date
`
`05/03/2010
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 2006/04/10 First Use In Commerce: 2006/04/10
`Eyewear, namely, sunglasses, lenses forsunglasses and visors for use with hel-
`mets
`
`U.S. Registration
`No.
`
`3953243
`
`Registration Date
`
`05/03/2011
`
`Word Mark
`
`Design Mark
`
`UA
`
`Application Date
`
`01/22/2010
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 024. First use: First Use: 2001/00/00 First Use In Commerce: 2001/00/00
`Towels; sports towels; football towels;golf towels
`
`U.S. Registration
`No.
`
`4507855
`
`Registration Date
`
`04/01/2014
`
`Word Mark
`
`UA SPEEDFORM
`
`Application Date
`
`04/25/2013
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 025. First use: First Use: 2013/05/00 First Use In Commerce: 2013/05/00
`Athletic footwear; Footwear
`
`U.S. Registration
`No.
`
`4842112
`
`Registration Date
`
`10/27/2015
`
`Word Mark
`
`Design Mark
`
`UA CLUTCHFIT
`
`Application Date
`
`04/03/2014
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 025. First use: First Use: 2014/05/00 First Use In Commerce: 2014/05/00
`Athletic footwear; Footwear
`
`U.S. Registration
`No.
`
`2727031
`
`Registration Date
`
`06/17/2003
`
`Word Mark
`
`UA
`
`Application Date
`
`08/21/2002
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of a stylized letter "U" vertically overlapping a stylized letter
`"A."
`
`Class 025. First use: First Use: 1999/12/01 First Use In Commerce: 1999/12/01
`CLOTHING NAMELY; SHIRTS, HATS, PANTS, T-SHIRTS, UNDERWEAR,
`BRASSIERES, SHORTS, HEADBANDS, WRISTBANDS AND SOCKS
`
`U.S. Registration
`No.
`
`3630507
`
`Registration Date
`
`06/02/2009
`
`Word Mark
`
`Design Mark
`
`UA
`
`Application Date
`
`10/10/2008
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of a stylized letter "U" vertically overlapping a stylized letter
`"A".
`
`Class 025. First use: First Use: 2002/08/21 First Use In Commerce: 2002/08/21
`Full line of athletic clothing; belts; clothing, namely, hand-warmers
`
`U.S. Registration
`No.
`
`3932605
`
`Registration Date
`
`03/15/2011
`
`Word Mark
`
`UA
`
`Application Date
`
`04/24/2009
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of a stylized letter "U" vertically overlapping a stylized letter
`"A" surrounded entirely by an oval line terminating in an arrow design.
`
`Class 025. First use: First Use: 2009/10/08 First Use In Commerce: 2009/10/08
`Beanies; Hats; Headwear; Hooded sweat shirts; Jackets; Long-sleeved shirts;
`Moisture-wicking sports pants; Pants; Polo shirts; Shirts; Short-sleeved shirts;
`Shorts; Socks; Sweat pants; Sweat shirts; T-shirts; Tank tops
`
`Attachments
`
`85194506#TMSN.png( bytes )
`85312941#TMSN.png( bytes )
`77819895#TMSN.png( bytes )
`77917981#TMSN.png( bytes )
`85209107#TMSN.png( bytes )
`85209046#TMSN.png( bytes )
`85028858#TMSN.png( bytes )
`77918131#TMSN.png( bytes )
`85915108#TMSN.png( bytes )
`86241495#TMSN.png( bytes )
`76442725#TMSN.png( bytes )
`77590378#TMSN.png( bytes )
`77981057#TMSN.png( bytes )
`2-3-16 Notice of Opposition - UAX 86648447.pdf(1012006 bytes )
`2-3-16 Exhibit A - Notice of Opposition - UAX 86648447.pdf(2265664 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
`
`/Douglas A. Rettew/
`
`Name
`
`Date
`
`Douglas A. Rettew
`
`02/03/2016
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`UNDER ARMOUR, INC.,
`
`v.
`
`PORTAFIT,
`
`
`
`Opposer
`
`Applicant.
`
`Opposition No.
`
`Application No.: 86648447
`Mark: UAX
`
`Filing Date: June 2, 2015
`
`NOTICE OF OPPOSITION
`
`Opposer Under Armour, Inc. (“Under Armour”) believes that it will be damaged by the
`
`registration of Application Serial No. 86648447 for the mark UAX for “cell phone cases;
`
`eyewear; scales in Class 9; sports watches; stop watches; wrist watches in Class 14; backpacks;
`
`luggage in Class 18; athletic apparel, namely, shirts, pants, jackets, footwear, hats and caps,
`
`athletic uniforms; headwear; socks; swimwear in Class 25; and exercise equipment, namely,
`
`exercise balls, exercise bars, strength training, yoga accessories, running and hydration
`
`accessories, sports braces; waist trimmer exercise belts; weight lifiing belts; work-out gloves in
`
`Class 28,” and opposes it. As grounds for its opposition, Under Armour alleges the following,
`
`upon actual knowledge with respect to itself and its own acts, and upon information and belief as
`
`to other matters:
`
`Under Armour Its Products and Services and Its Famous Trademarks
`
`1.
`
`Opposer Under Armour is a Maryland corporation with an address at 1020 Hull
`
`Street, Baltimore, Maryland 21230. Under Armour is one of the world’s most successful,
`
`popular, and well—known providers of athletic apparel, footwear, sporting goods, and
`
`accessories. Through Under Arrnour’s innovative use of advanced engineering and technology,
`
`

`
`Notice of Opposition
`Serial No. 86648447
`Mark: UAX
`
`it has revolutionized the performance-product industry. In 2015 alone, Under Armour sold
`
`more than $3 billion worth of products.
`
`2.
`
`Since at least as early as 1996, Under Armour has continuously used and
`
`promoted the UNDER ARMOUR name/mark for apparel.
`
`3.
`
`Since at least as early as 1996, Under Armour has abbreviated UNDER
`
`ARMOUR to “UA” and has used the mark UA in connection with its athletic apparel. Under
`
`Armour has used the UA mark in various forms, including but not limited to in block letters and
`
`in stylized form shown below (and variations), which consists of the letter “U” vertically
`
`overlapping the letter “A.” The block-letter and stylized UA marks are individually and
`
`collectively referred to as the “UA Marks.”
`
`4.
`
`Over the years, Under Armour has expanded to a wide range of other products
`
`and services, including but not limited to a full line of clothing, footwear, and headwear;
`
`accessories, including eyewear and gloves; wearable electronic devices; safety gear; tactical
`
`gear; workwear; hunting gear; and sports equipment. The distinctive UA Marks have been used
`
`and promoted across Under Arrnour’s extensive product line.
`
`5.
`
`The UA Marks are used to identify Under Arrnour’s products and are prominently
`
`used in marketing, advertising, and other materials, including throughout Under Armour’s
`
`website at www.underarrnour.com, as shown in the examples below:
`
`

`
`Notice of Opposition
`Serial No. 86648447
`Mark: UAX
`
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`
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`
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`
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`
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`
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`
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`
`GENDER
`
`CATEGORIES
`
`COLOR
`
`SIZE A FIT
`
`SPORT
`
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`
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`
`

`
`Notice of Opposition
`Serial No. 86648447
`Mark: UAX
`
`V
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`
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`
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`
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`
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`
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`
`MEN women
`
`KIDS
`
`snoas
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`
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`
`Notice of Opposition
`Serial No. 86648447
`Mark: UAX
`
`UA RECORD
`
`UA Record Is the dashboard for your 24/7 activity, sleep.
`and workouts. Connect your fitness device and other
`
`apps for a view of all you've accomplished In one place.
`
`Q
`
`WORKOUTS
`
`9":xnr
`
`CHALLENGES
`
`COMMUNITY
`
`DOWNLOAD THE APP VIEW THE BLOG
`
`UA rim: Smlghhu
`
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`
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`
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`
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`
`6.
`
`Under Armour has sold billions of dollars’ worth of products, which are
`
`promoted, offered, and sold nationwide through a wide variety of retail means, including but not
`
`limited to thousands of retail stores. These retail stores include Under Arrnour’s own Factory
`
`

`
`Notice of Opposition
`Serial No. 86648447
`Mark: UAX
`
`and Brand House retail stores, as well as national, regional, independent, and specialty retailers
`
`such as Academy Sports & Outdoors, City Sports, Bass Pro Shops, Cabela ’s, Foot Locker,
`
`Finish Line, The Sports Authority, Dick ’s Sporting Goods, Macy ’s, Dunham ’s, Modell ’s,
`
`Hibbett Sports, Nordstrom, and The Army and Air Force Exchange Service.
`
`7.
`
`Under Armour’s products are also offered and sold through the websites and mail
`
`order catalogs of many of its retailers and Under Armour’s websites, catalogs, and toll-free call
`
`center.
`
`8.
`
`For years, Under Armour has spent millions of dollars annually advertising and
`
`promoting itself, its marks, and it products to the general public. Under Armour has widely
`
`and extensively promoted itself, its marks, and it products through virtually every available
`
`type of media, including but not limited to print publications, signage, television, and/or the
`
`Internet.
`
`9.
`
`Under Armour also promotes itself, its marks, and it products on its own and
`
`authorized websites and social-media sites, including but not limited to
`
`www.underarrnour.com, www.ua.com (which redirects to www.underarrnour.com),
`
`www.facebook.corn/underarrnour, and www.twitter.com/underannour, among others, as well
`
`as through Under Armour’s catalogs. Further, Under Armour’s marks and products are
`
`advertised and/or sold through many of its retailers’ websites, including but not limited to the
`
`websites used by Bass Pro Shops, Bloomingdales. com, Cabela ’s, City Sports, Dick ’s Sporting
`
`Goods, Eastbay, Eastern Mountain Sports, Finish Line, Foot Locker, Gilt Groupe, Hibbett, LL
`
`Bean, Lord & Taylor, Macys.com, MC Sports, Modell ’s, Nordstrom, Sportsman ’s Guide, and
`
`Sportsman ’s Warehouse.
`
`

`
`Notice of Opposition
`Serial No. 86648447
`Mark: UAX
`
`10. With respect to publications and signage, Under Armour has advertised and
`
`promoted itself, its marks, and it products in a wide variety of nationally circulated magazines
`
`and newspapers. Further, Under Armour and its marks have been featured on billboards and
`
`other signage in various cities, including but not limited to Baltimore, Philadelphia, and New
`
`York City’s Times Square (shown below). The marks have also been prominently featured in
`
`stadium and sport-event advertising, including, for example, placement on the left outfield
`
`wall at Wrigley Field, on the “Green Monster” at Fenway Park, and on digital signage at
`
`Camden Yards.
`
`1 1.
`
`Additionally, Under Armour has advertised and promoted itself, its marks, and it
`
`products through television commercials, including a television commercial during the Super
`
`

`
`Notice of Opposition
`Serial No. 86648447
`Mark: UAX
`
`Bowl, product placement in popular movies, national television programs, video games, and
`
`coverage of sporting events featuring its branded products, among other means.
`
`12.
`
`Sponsorships, outfitting agreements, and individual athlete agreements represent
`
`another significant form of advertising and promotion by Under Armour. Under Arrnour’s
`
`marks and products are promoted through high-profile athletes and teams competing at the
`
`youth, collegiate, professional, and Olympic levels. As a result, Under A1mour’s products are
`
`seen in action and receive substantial exposure to consumer audiences through the Internet,
`
`television, magazines, and at live sporting events.
`
`13.
`
`Since 2006, Under Armour has been an authorized supplier of footwear to the
`
`NFL and is currently also the official performance footwear supplier to MLB and authorized
`
`supplier of gloves to the NFL.
`
`14.
`
`In addition to its own substantial advertising and promotional activities, Under
`
`Armour and its marks and products have received and continue to receive widespread
`
`unsolicited media coverage. Indeed, many of the athletes, teams, and sporting events sponsored
`
`by Under Armour appear on nationally broadcast television programs and in widely circulated
`
`publications.
`
`15. Under Armour has received numerous awards for its commercial success in
`
`connection with the development of its innovative and technologically enhanced products and
`
`its marketing and branding achievements. In 2014, Under Armour received the prestigious
`
`“Marketer of the Year” Award from Advertising Age magazine. Additionally, Yahoo Finance
`
`named Under Armour the 2014 “Company of the Year.”
`
`

`
`Notice of Opposition
`Serial No. 86648447
`Mark: UAX
`
`16.
`
`As a result of the distinctive nature, and thus inherent strength, of the UA Marks
`
`as applied to Under Armour’s products; the widespread advertising, publicity, promotion, and
`
`sales of products in connection with the UA Marks; and Under Ar1nour’s longstanding and
`
`extensive use of the UA Marks, the UA Marks have been strong and well known for years.
`
`17.
`
`Under Armour owns, among others, the following valid and subsisting U.S.
`
`federal trademark registrations for its UA Marks, including for apparel, eyewear, headwear,
`
`footwear, and athletic equipment:
`
` Reg. No.
`
`UA
`
`Re . Date
`4076189
`12/27/2011
`
`Products/Services
`
`Full line of athletic clothing; shirts; tops; t-shirts; tank
`tops; athletic uniforms; fleece pullovers; hooded
`pullovers; hooded sweat shirts; knit shirts; long-sleeved
`shirts; moisture-wicking sports shirts; polo shirts; short-
`sleeved shirts; sleeveless jerseys; sports jerseys; sport
`shirts; sports shirts; sweat shirts; undershirts; wind
`shirts; beachwear; fishing shirts; sweaters; pants; sweat
`pants; skirts; skorts; leggings; dresses; shorts; bottoms;
`bib overalls; capri pants; moisture-wicking sports
`pants; rain trousers; unitards; waterproof pants; wind
`pants; jogging pants; underwear; bras; baselayer
`bottoms; baselayer tops; boxer briefs; boxer shorts;
`briefs; ladies’ underwear; men’s underwear; moisture-
`wicking sports bras; sports bras; underwear, namely,
`thongs; underwear, namely, boy shorts; headwear; hats;
`headbands; hoods; skull caps; skull wraps; children's
`headwear; headwear, namely, visors; bandanas;
`scarves; beanies; caps; bucket hats; neck gaiters;
`wristbands; sweat bands; jackets; rain jackets; rainproof
`jackets; rainwear; waterproofjackets; wind resistant
`jackets; vests; coats; foul weather gear; socks; men's
`socks; men’s dress socks; gloves; mittens; belts;
`clothing, namely, hand-warrners; Clothing for athletic
`use, namely, padded shirts, padded pants, padded
`shorts, padded elbow compression sleeves being part of
`an athletic garment; ankle socks; footwear; athletic
`footwear; beach footwear; running shoes; footwear,
`namely, thongs; training shoes; cleats for attachment to
`
`

`
`Notice of Opposition
`Serial No. 86648447
`Mark: UAX
`
`Mark
`
`
`
`_Products'fSe1-vices‘
`
`UA
`
`4063401
`
`11/29/2011
`
`sports shoes; sneakers; sandals; golf shirts; golf
`trousers; golf shorts; football shoes; football cleats;
`baseball shoes; baseball uniforms; baseball caps;
`baseball cleats; softball cleats; hunting vests; hunting
`jackets; hunting pants; hunting shirts; bib overalls for
`hunting; camouflage gloves; camouflage jackets;
`camouflage pants; camouflage shirts; camouflage vests;
`camouflage leggings; camouflage underwear; ski bibs;
`ski gloves; ski jackets. ski pants; ski wear; ski socks;
`snow pants; snowboard gloves; snowboard pants;
`snowboard socks; soccer boots; soccer goalkeeper
`jerseys; tennis wear; basketball sneakers; volleyball
`jerseys; lacrosse cleats in Class 25
`Online retail store services featuring apparel,
`footwear, sporting goods, eyewear, sunglasses,
`headwear, towels, tote bags, travel bags, backpacks,
`messenger bags, duffel bags, shoe bags for travel,
`toiletry bags sold empty, wheeled bags, waist packs,
`sling bags, umbrellas, sports bottles sold empty, wrist
`bands, sweat bands, belts, gloves, hand-warmers,
`lanyards for holding mouthpieces, water bottles,
`eyeglasses, sunglasses, badges, event tickets,
`flashlights, or keys; Retail store services featuring
`apparel, footwear, sporting goods, eyewear,
`sunglasses, headwear, towels, tote bags, travel bags,
`backpacks, messenger bags, duffel bags, shoe bags for
`travel, toiletry bags sold empty, wheeled bags, waist
`packs, sling bags, umbrellas, sports bottles sold empty,
`wrist bands, sweat bands, belts, gloves, hand-warmers,
`lanyards for holding mouthpieces, water bottles,
`eyeglasses, sunglasses, badges, event tickets,
`flashlights, or keys; Mobile retail store services
`featuring apparel, footwear, sporting goods, eyewear,
`sunglasses, headwear, towels, tote bags, travel bags,
`backpacks, messenger bags, duffel bags, shoe bags for
`travel, toiletry bags sold empty, wheeled bags, waist
`packs, sling bags, umbrellas, sports bottles sold empty,
`wrist bands, sweat bands, belts, gloves, hand-warmers,
`lanyards for holding mouthpieces, water bottles,
`eyeglasses, sunglasses, badges, event tickets,
`flashlights, or ke s in Class 35
`
`10
`
`

`
`Notice of Opposition
`Serial No. 86648447
`Mark: UAX
`
`
`
`I-'r_u_I_1ucts/S.e_r-vice.s-
`
`
`3897910-
`Baseball and sofiball equipment for catchers, namely,
`12/28/2010
`catchers’ helmets in Class 9;
`
`
`
`UA
`
`Golf bags; bags specially adapted for sports equipment;
`golf gloves; batting gloves; football gloves; lacrosse
`gloves; cases for holding mouth guards for athletic use;
`football girdles; protective athletic cups; jock straps;
`baseball bat bags; field hockey gloves; field hockey
`stick bags; lacrosse stick bags; running gloves; softball
`bat bags; baseball and softball equipment for catchers,
`namely, face masks, chest protectors, leg guards,
`protective knee supports, and replacement parts for the
`foregoing goods; athletic equipment, namely, mouth
`guards, guards for the lips, chin pads, knee pads, elbow
`pads, forearm pads, and shin guards, excluding those
`goods as used in connection with skateboarding in
`
`Class 28
`
`Toiletry kit bags, sold empty; sport bags; travel bags;
`duffel bags; backpacks; sack pacs; reservoir backpacks;
`all purpose sport bags; all-purpose athletic bags; athletic
`bags; bags for sports; daypacks; golf umbrellas; hiking
`bags; shoe bags for travel; umbrellas; messenger bags;
`tote bags; wristlet bags; briefcases; wheeled bags; bags
`and holdalls for sports clothing; hunting bags in Class
`1 8
`
`‘
`
`UA
`
`3831854
`05/25/2010
`
`4535456
`
`05/27/2014
`
`imers in Class 16
`
`3974721
`06/07/2011
`
`Lanyards for holding mouthpieces, water bottles,
`eyeglasses, sunglasses, badges, event tickets,
`flashlights, or keys in Class 22
`Eyewear, namely, sunglasses, lenses for sunglasses
`3950203
`and visors for use with helmets in Class 9
`04/26/2011
`Towels; sports towels; football towels; golf towels in
`3953243
`05/03/2011 Class 24
`
`_|
`
`UA
`
`UA
`
`UA
`
`UA
`
`UA
`
`SPEEDFORM 04/01/2014
`
`| 4507855
`
`Athletic footwear; footwear in Class 25
`
`FA CLUTCHFIT 4842112
`
`1 0/27/201 5
`
`Athletic footwear, footwear in Class 25
`
`11
`
`

`
`Notice of Opposition
`Serial No. 86648447
`Mark: UAX
`
`Produc"tsZSeri?ic'es;2
`
`
`
`Clothing namely; shirts, hats, pants, t—shirts, underwear,
`brassieres, shorts, headbands, wristbands and socks, in
`Class 25
`
`Re - . -Date
`
`2727031
`06/17/2003
`
`
`
`
`
`3630507
`
`06/02/2009
`
`Full line of athletic clothing; belts; clothing, namely,
`hand-warmers, in Class 25
`
`Beanies; Hats; Headwear; Hooded sweat shirts; Jackets;
`Long-sleeved shirts; Moisture-wicking sports pants;
`Pants; Polo shirts; Shirts; Short-sleeved shirts; Shorts;
`Socks; Sweat pants; Sweat shirts; T-shirts; Tank tops, in
`Class 25
`
`
`
`
`3932605
`
`03/15/2011
`
`Printouts of these registrations from the PTO TESS and TSDR databases, including assignment
`
`information, are attached as Exhibit A.
`
`Applicant and Its Mark
`
`18. Applicant Portafit is a New York limited liability company with an address of 902
`
`15‘ Ct, Brooklyn, NY 11223.
`
`19.
`
`On June 2, 2015, Applicant filed intent-to-use Application Serial No. 86648447
`
`for the mark UAX for “Cell phone cases; eyewear; scales” in Class 9; “sports watches; stop
`
`watches; Wristwatches” in Class 14; “backpacks; luggage” in Class 18; “athletic apparel,
`
`namely, shirts, pants, jackets, footwear, hats and caps, athletic uniforms; headwear; socks;
`
`swimwear” in Class 25; and “exercise equipment, namely, exercise balls, exercise bars, strength
`
`training, yoga accessories, running and hydration accessories, sports braces; waist trimmer
`
`exercise belts; weight lifting belts; work-out gloves” in Class 28.
`
`Count One
`
`Likelihood of Confusion, 15 U.S.C. § 1052§d[
`
`20. Under Armour repeats and realleges each and every allegation set forth in each of
`
`the preceding paragraphs.
`
`12
`
`

`
`Notice of Opposition
`Serial No. 86648447
`Mark: UAX
`
`21. Under Armour has used in commerce, registered, and/or applied to register its UA
`
`Marks before Applicant’s June 2, 2015 filing date of its intent-to-use application (and/or any
`
`first-use date that may be alleged by Applicant).
`
`22. Applicant’s UAX mark is similar to Under Armour’s prior used and registered
`
`UA Marks, and the goods covered by Under Ar1nour’s used/registered marks and Applicant’s
`
`UAX mark are identical and/or related, such that a potential consumer would likely be
`
`confused, mistaken, or deceived as to the source of the parties’ respective goods under Section
`
`2(d) of the Lanham Act, as amended, 15 U.S.C. § 1052(d).
`
`WHEREFORE, Under Armour believes that it will be damaged by the registration of the
`
`mark shown in Application Serial No. 86648447 and respectfully requests that this opposition be
`
`sustained and that registration to Applicant be refused.
`
`A filing fee has been submitted electronically. If the filing fee is found to be insufficient
`
`for any reason, please charge such deficiency to Deposit Account No. 06-0916.
`
`Respectfully submitted,
`
`Dated: February 3, 2016
`
`By:
`
`/Douglas A. Rettew/
`Douglas A. Rettew
`Anna B. Naydonov
`FINNEGAN, HENDERSON, FARABOW,
`GARRETT & DUNNER, LLP
`
`901 New York Avenue, N.W.
`Washington, D.C. 20001-4413
`Telephone:
`(202) 408-4000
`
`Attorneys for Opposer
`UNDER ARMOUR, INC.
`
`13
`
`

`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a true copy of the foregoing NOTICE OF OPPOSITION was served
`
`on February 3, 2016, via first class mail, postage prepaid, on Applicant at the following address
`
`of record:
`
`PORTAFIT
`902 1“ CT.
`
`BROOKLYN, NY 11223
`
`%fiUCd?«ua4JC/
`
`

`
`Notice of Opposition
`Serial No. 86648447
`Mark: UAX
`
`EXHIBIT A
`
`

`
` United States Patent and Trademark Office
`
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`UA
`
`Word Mark
`
`UA
`
`Goods and
`Services
`
`IC 025. US 022 039. G & S: Full line of athletic clothing; shirts; tops; t-shirts; tank tops;
`athletic uniforms; fleece pullovers; hooded pullovers; hooded sweat shirts; knit shirts; long-
`sleeved shirts; moisture-wicking sports shirts; polo shirts; short-sleeved shirts; sleeveless
`jerseys; sports jerseys; sport shirts; sports shirts; sweat shirts; undershirts; wind shirts;
`beachwear; fishing shirts; sweaters; pants; sweat pants; skirts; skorts; leggings; dresses;
`shorts; bottoms; bib overalls; capri pants; moisture-wicking sports pants; rain trousers;
`unitards; waterproof pants; wind pants; jogging pants; unden/vear; bras; baselayer bottoms;
`baselayer tops; boxer