Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA735473
`03/23/2016
`
`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
`
`DSM IP Assets B.V.
`
`Granted to Date
`of previous ex-
`tension
`
`Address
`
`03/23/2016
`
`Het Overloon 1
`Heerlen, NL-6411 TE
`NETHERLANDS
`
`Attorney informa-
`tion
`
`Duane M. Byers
`Nixon & Vanderhye
`901 N. Glebe Road, 11th Floor
`Arlington, VA 22203
`UNITED STATES
`nixonptomail@nixonvan.com, dmb@nixonvan.com Phone:7037867421
`
`Applicant Information
`
`Application No
`
`86687132
`
`Publication date
`
`11/24/2015
`
`Opposition Filing
`Date
`
`Applicant
`
`03/23/2016
`
`Rags Unlimited, Inc.
`PO Box 25
`Lowell, NC 28098
`UNITED STATES
`
`Opposition Peri-
`od Ends
`
`03/23/2016
`
`Goods/Services Affected by Opposition
`
`Class 009. First Use: 2011/05/01 First Use In Commerce: 2011/05/01
`All goods and services in the class are opposed, namely: Protective work gloves
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Dilution by blurring
`
`Trademark Act section 2(d)
`
`Trademark Act section 43(c)
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`
`4021172
`
`Registration Date
`
`09/06/2011
`
`Word Mark
`
`DYNEEMA
`
`Application Date
`
`04/20/2009
`
`Foreign Priority
`Date
`
`12/01/2008
`
`

`

`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 0 First Use In Commerce: 0
`Gloves for the protection against accidents, irradiation and fire, namely, gloves
`for protection against accidents; gloves for protection against x-rays for industrial
`purposes; bullet-resistant vests; bomb-disposal suits; protective clothing,
`namely, cut resistant pants, cut resistant gloves, cut resistant sweaters, cut res-
`istant shirts, cut resistant aprons, high pressure water cutting aprons, and cut/
`slash/puncture/abrasion resistant garments; protection or safety helmets,
`namely, helmets for military and law enforcement use; protective helmets; mo-
`torcycle helmets; safety helmets; protective sports helmets; shoes for protection
`against accidents and fire, protective industrial shoes, protective work shoes,
`protective hiking shoes, protective sports shoes, namely, safety shoes and
`boots, cut resistant shoes, and anti-penetration shoes; nets, safety nets used in
`theconstruction industry, bomb blankets, namely, fire protective equipment in the
`nature of blankets for protecting humansexposed to bomb blasts, bomb tents
`and blast curtains, namely, protective equipment for safety gear, namely, blast
`resistant curtains and tents for the protection of humans from bomb blasts, life
`nets; protection devices for personal use against accidents and barrier nets,
`namely, safety nets to protect crew of cargo airplanes against moving cargo;
`diving suits, gloves for divers, divers masks; protective eye ware, namely,
`screens, films, filters, and strips for protecting the eyes; eye and face shields for
`workers, namely, face protection shields and eye covers for protective purposes;
`safety and protection equipment for falls, namely, safety nets, safety markers,
`and safety goggles; safety restraint devices other than for vehicle seats and
`sports equipment, namely, safety restrains; safety belts, namely, safety belts for
`the protection of humans and not for vehicles or motor cars; safety equipment,
`namely, a lifeline system for horizontal or vertical movement to which someone
`is attached for protection against fall hazards, composed of harnesses, lanyards,
`and/or ropes; safety straps, namely, safety straps for the protection of humans
`and not for vehicles or motor cars; rescue ropes; and safety harnesses, namely,
`safety harnesses for the protection of humans and not for vehicles or motor cars
`Class 010. First use: First Use: 0 First Use In Commerce: 0
`Surgical instruments and apparatus; medical and dental apparatus, instruments
`and articles, namely, medical apparatus and instruments for use in surgery; arti-
`ficial limbs, eyes and teeth; orthopedic articles, namely, orthopedic supports, or-
`thopedic braces, orthopedic apparatus and instruments for diagnostic and thera-
`peutic use, orthopedic devices for diagnostic and therapeutic use, orthopedic
`cushions and padding; suture materials, namely, sutures, fibers, yarns, and
`threadsfor biomedical and medical applications; medical treatment apparel and
`medical wearing apparel, namely, masks for use by medical personnel, respirat-
`ory masks for medical purposes, oxygen masks for medical use, sanitary masks
`for medical purposes, caps, gloves, and clothing used by medical, surgical, and
`dental personnel, namely, scrub gloves, scrub tops, scrub pants, scrub caps,
`footwear, medicalgowns; strait jackets; medical compression socks; orthopedic
`articles, namely, belts, footwear, and soles; diabetes socks; prosthetics socks;
`orthopedic gel liners for footwear and braces; medical implants made of artificial
`materials; bandages, namely, orthopedic support bandages, support bandages,
`and compression bandages
`Class 012. First use: First Use: 0 First Use In Commerce: 0
`Car parts for the protection against accidents, namely, vehicles armor panels;
`spall liners, namely, linings used for the interior of vehicles to decrease the risk
`from injury caused by spalls; armorpanels for vehicles, military vehicles,police
`
`

`

`vehicles, VIP vehicles, and transporters; vehicle air bags; baby carriages;
`vehicle safety seats for children; synthetic and plastic parts for race car body-
`work and synthetic and plastic partsfor race boat hull composites, namely,
`plastic parts for vehicles and boats, namely, vehicle and boat exterior and interi-
`or plastic decorative and protective trim, racing automobile interior parts,
`namely, safety nets, and structural partsfor vehicles and boats; parachutes; hot-
`air balloons
`
`U.S. Registration
`No.
`
`3667105
`
`Registration Date
`
`08/11/2009
`
`Application Date
`
`10/19/2006
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`DYNEEMA THE WORLD'S STRONGEST FIBER
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 2003/10/21 First Use In Commerce: 2003/10/21
`Protection devices for personal use against accidents, namely, gloves,
`clothingand garments, commercial safety nets, [safety nets for use in construc-
`tion, ] trawl safety nets, aquaculture safety nets used in commercial fishing and
`cargo safety nets used in transport, protective helmets; [ barrier safety nets; ]
`protective clothing; bullet resistant and blast resistant clothing
`Class 012. First use: First Use: 2003/10/21 First Use In Commerce: 2003/10/21
`Car parts for the protection against accidents, namely, vehicle armor panels; fit-
`ted liners for the cargo area of vehicles and armor panels for military vehicles,
`police vehicles, VIP vehicles
`Class 018. First use: First Use: 2004/03/30 First Use In Commerce: 2004/03/30
`[ Leather unworked, semi-worked and imitations of leather; animal skins and
`hides; trunks and ] traveling bags [ ; umbrellas, parasols and walking sticks;
`whips, harness and saddlery; leather leads for horses; leather straps; leather
`thread ]
`Class 022. First use: First Use: 2004/03/30 First Use In Commerce: 2004/03/30
`Nets for fishing/aquaculture, yachting sails and lines
`Class 024. First use: First Use: 2004/03/30 First Use In Commerce: 2004/03/30
`Non-woven textile fabrics, namely, yachting sail cloth, textile substitute materials
`made from synthetic materials, knitted fabric, non-woven fabrics for use in the
`manufacture of container door curtains
`Class 025. First use: First Use: 2004/03/30 First Use In Commerce: 2004/03/30
`Headwear, footwear; [ fishing vests, swimsuits, apron; ] gloves; [ hosiery; water-
`proof clothing, namely, jackets and pants; scarves; belts, ] fencing suits
`Class 028. First use: First Use: 2004/03/30 First Use In Commerce: 2004/03/30
`Sporting goods, namely, archery bow strings and kite lines; lines for fishing,
`landing net for anglers; [ nets for sports, namely, tennis, volleyball, basketball; ]
`strings for rackets; gut for fishing, waterski and wakeboard ropes, rock climbing
`
`

`

`fasteners and harnesses
`
`U.S. Registration
`No.
`
`4553797
`
`Registration Date
`
`06/24/2014
`
`Word Mark
`
`Design Mark
`
`DYNEEMA
`
`Application Date
`
`04/08/2013
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 025. First use: First Use: 0 First Use In Commerce: 0
`Clothing, namely, shirts, pants, jackets, vests, pullovers, sweatshirts, shorts, ath-
`letic sleeves, leggings, chaps, skirts, blouses; headgear, namely, headwear,
`hats, caps, bandannas, sun-visors, helmet liners; footwear; clothing, namely,
`gloves; overshoes and overboots; footwear parts, namely, heels, soles and pro-
`tective end pieces in the nature of, namely, toe caps, whether removable or not;
`socks; boot liners; ski-boots; non-slip devices for footwear, namely, Non-slip
`soles for footwear, rubber shoe soles; motorcycle apparel, namely, motorcycle
`gloves, motorcycle boots, motorcycle jackets,motorcycle pants, motorcycle rain
`suits; protective motorcycle apparel, namely,motorcycle gloves, motorcycle
`boots, motorcycle jackets, motorcycle pants, motorcycle rain suits
`
`U.S. Registration
`No.
`
`3987978
`
`Registration Date
`
`07/05/2011
`
`Word Mark
`
`Design Mark
`
`DYNEEMA
`
`Application Date
`
`03/04/2010
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 028. First use: First Use: 0 First Use In Commerce: 0
`Sporting goods, namely, archery bow strings, kite lines, nets for sports, namely,
`tennis, volleyball, basketball; yachting sails; lines for fishing, lures for hunting or
`fishing, fishing tackle, landing net for anglers, gut for fishing; strings for rackets;
`water-ski and wakeboard ropes; fasteners and harnesses for rock climbers,
`namely, climbers' harnesses, and climbing cams and anchors made of ultra high
`molecular weight polyethylene; hockey sticks, safety devices for use in sports,
`namely, fishing safety harnesses, harnesses for sailboards, snowboards, skis,
`and skateboards, water ski tow harnesses, adjustable harnesses to correct
`one's posture for sports or other physical training purposes, knee pads for ath-
`letic use, elbow pads for athletic use, shoulder pads for athletic use,
`sportsequipment for boxing and martial arts, namely, boxing gloves, boxing
`bags, punching mitts, belly protectors, groin protectors and shin guards, face
`masks for baseball, hockey, lacrosse; climbing harnesses; straps for use in
`sports, namely,straps used for yoga and other fitness activities and for carrying
`a yoga mat, mountaineering binding straps, restraintstraps for body boards, sail
`board footstraps, sports fitness restraint strapsfor running in tandem or pairs;
`water skis, surfboards, snowboards, bob-sleighs, body boards, ice skates; fen-
`
`

`

`cing masks, fencing gauntlets, fencing gloves; baseball gloves, golf gloves; flip-
`pers for swimming
`
`U.S. Registration
`No.
`
`2078586
`
`Registration Date
`
`07/15/1997
`
`Application Date
`
`12/01/1995
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`DYNEEMA
`
`NONE
`
`Class 017. First use: First Use: 1984/09/00 First Use In Commerce: 1993/04/15
`plastics in the form of fibers for general industrial use
`Class 022. First use: First Use: 1984/09/00 First Use In Commerce: 1993/04/15
`plastic fibers for textile use
`
`U.S. Registration
`No.
`
`3123827
`
`Registration Date
`
`08/01/2006
`
`Word Mark
`
`Design Mark
`
`DYNEEMA
`
`Application Date
`
`12/23/2004
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 017. First use: First Use: 0 First Use In Commerce: 0
`Semi-processed plastic substances in the form of fibers
`Class 022. First use: First Use: 0 First Use In Commerce: 0
`Fibers for textile use; string, ropes and cords
`Class 023. First use: First Use: 0 First Use In Commerce: 0
`Threads and filaments for textile use
`Class 024. First use: First Use: 0 First Use In Commerce: 0
`Textile products for industrial use, namely, ballistic resistant fabrics for use in the
`production of [ bulletproof and] blast proof clothing, [ shoes, ] garments and
`shields; woven or non-woven polyethylene fabrics for use in the manufacture of
`protective clothing and helmets and in hard armor
`
`U.S. Registration
`No.
`
`3047274
`
`Registration Date
`
`01/24/2006
`
`Word Mark
`
`DYNEEMAPURITY
`
`Application Date
`
`07/31/2002
`
`Foreign Priority
`Date
`
`06/24/2002
`
`

`

`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 010. First use: First Use: 0 First Use In Commerce: 0
`MEDICAL AND SURGICAL PRODUCTS, NAMELY, SURGICAL COM-
`PRESSES MADE FROM FIBER, YARN AND THREAD; SURGICAL MESHES
`FOR USE INSOFT TISSUE REPAIR; SURGICAL IMPLANTS COMPRISING
`ARTIFICIAL MATERIAL INCLUDING POLYETHYLENE FIBERS; SURGICAL
`THREAD COMPRISED OF POLYETHYLENE FIBERS; AND SUTURES COM-
`PRISED OF POLYETHYLENE FIBERS
`Class 017. First use: First Use: 0 First Use In Commerce: 0
`POLYETHYLENE FIBERS AND THREADS FOR USEIN THE MANUFACTURE
`OF BIOLOGICAL, BIOMEDICAL AND MEDICAL PRODUCTS AND DEVICES
`Class 022. First use: First Use: 0 First Use In Commerce: 0
`SYNTHETIC FIBERS FOR USE IN THE MANUFACTURE OF MEDICAL IM-
`PLANTS AND DEVICES
`Class 023. First use: First Use: 0 First Use In Commerce: 0
`SYNTHETIC YARNS FOR USE IN THE MANUFACTURE OF BIOLOGICAL,
`BIOMEDICAL AND MEDICAL PRODUCTS AND DEVICES
`
`Attachments
`
`79079714#TMSN.png( bytes )
`77025206#TMSN.png( bytes )
`79129897#TMSN.png( bytes )
`79084667#TMSN.png( bytes )
`79011221#TMSN.png( bytes )
`76437267#TMSN.png( bytes )
`4662-3143 Notice of Opposition - dynestrong dyneema etc filed 23 march
`2016.pdf(111351 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
`
`/dmb/
`
`Name
`
`Date
`
`Duane M. Byers
`
`03/23/2016
`
`

`

`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`DSM IP ASSETS B.V.
`
`
`
`
`
`
`RAGS UNLIMITED, INC.
`
`Applicant.
`
`
`Opposer,
`
`
`v.
`
`)
`
`)
`
`)
`
`)
`) Opposition No.
`) Application No. 86/687,132
`)
`
`)
`
`)
`
`
`
`
`NOTICE OF OPPOSITION
`
`Opposer, DSM IP ASSETS B.V., with a business address of HET OVERLOON 1,
`
`HEERLEN, NL 6411 TE, THE NETHERLANDS, hereby opposes registration of the mark
`
`DYNESTRONG that is the subject of Application No. 86/687,132, published on November 24,
`
`2015, and requests that registration to Applicant be refused.
`
`As grounds in support of its opposition, Opposer asserts as follows:
`
`1. Opposer is the owner of the U.S. Trademark Registration No. 4021172 for the
`
`DYNEEMA trademark for:
`
`IC 009: Gloves for the protection against accidents, irradiation and fire,
`namely, gloves for protection against accidents; gloves for protection
`against x-rays for industrial purposes; bullet-resistant vests; bomb-disposal
`suits; protective clothing, namely, cut resistant pants, cut resistant gloves,
`cut resistant sweaters, cut resistant shirts, cut resistant aprons, high
`pressure water cutting aprons, and cut/slash/puncture/abrasion resistant
`garments; protection or safety helmets, namely, helmets for military and
`law enforcement use; protective helmets; motorcycle helmets; safety
`helmets; protective sports helmets; shoes for protection against accidents
`and fire, protective industrial shoes, protective work shoes, protective
`hiking shoes, protective sports shoes, namely, safety shoes and boots, cut
`resistant shoes, and anti-penetration shoes; nets, safety nets used in the
`construction industry, bomb blankets, namely, fire protective equipment in
`
`
`
`1
`
`

`

`the nature of blankets for protecting humans exposed to bomb blasts,
`bomb tents and blast curtains, namely, protective equipment for safety
`gear, namely, blast resistant curtains and tents for the protection of
`humans from bomb blasts, life nets; protection devices for personal use
`against accidents and barrier nets, namely, safety nets to protect crew of
`cargo airplanes against moving cargo; diving suits, gloves for divers,
`divers masks; protective eye ware, namely, screens, films, filters, and
`strips for protecting the eyes; eye and face shields for workers, namely,
`face protection shields and eye covers for protective purposes; safety and
`protection equipment for falls, namely, safety nets, safety markers, and
`safety goggles; safety restraint devices other than for vehicle seats and
`sports equipment, namely, safety restrains, safety belts, namely, safety
`belts for the protection of humans and not for vehicles or motor cars;
`safety equipment, namely, a lifeline system for horizontal or vertical
`movement to which someone is attached for protection against fall
`hazards, composed of harnesses, lanyards, and/or ropes; safety straps,
`namely, safety straps for the protection of humans and not for vehicles or
`motor cars; rescue ropes; and safety harnesses, namely, safety harnesses
`for the protection of humans and not for vehicles or motor cars.
`
`IC 010: Surgical instruments and apparatus; medical and dental apparatus,
`instruments and articles, namely, medical apparatus and instruments for
`use in surgery; artificial limbs, eyes and teeth; orthopedic articles, namely,
`orthopedic supports, orthopedic braces, orthopedic apparatus and
`instruments for diagnostic and therapeutic use, orthopedic devices for
`diagnostic and therapeutic use, orthopedic cushions and padding; suture
`materials, namely, sutures, fibers, yarns, and threads for biomedical and
`medical applications; medical treatment apparel and medical wearing
`apparel, namely, masks for use by medical personnel, respiratory masks
`for medical purposes, oxygen masks for medical use, sanitary masks for
`medical purposes, caps, gloves, and clothing used by medical, surgical,
`and dental personnel, namely, scrub gloves, scrub tops, scrub pants, scrub
`caps, footwear, medical gowns; strait jackets; medical compression socks;
`orthopedic articles, namely, belts, footwear, and soles; diabetes socks;
`prosthetics socks; orthopedic gel liners for footwear and braces; medical
`implants made of artificial materials; bandages, namely, orthopedic
`support bandages, support bandages, and compression bandages.
`
`IC 012: Car parts for the protection against accidents, namely, vehicles
`armor panels; spall liners, namely, linings used for the interior of vehicles
`to decrease the risk from injury caused by spalls; armor panels for
`vehicles, military vehicles, police vehicles, VIP vehicles, and transporters;
`vehicle air bags; baby carriages; vehicle safety seats for children; synthetic
`and plastic parts for race car bodywork and synthetic and plastic parts for
`race boat hull composites, namely, plastic parts for vehicles and boats,
`namely, vehicle and boat exterior and interior plastic decorative and
`
`
`
`2
`
`

`

`protective trim, racing automobile interior parts, namely, safety nets, and
`structural parts for vehicles and boats; parachutes; hot-air balloons.
`
`
`This registration is valid, subsisting, unrevoked, and uncancelled. Opposer has duly
`
`registered the DYNEEMA trademark for the above-identified goods in the
`
`registration. The Registration dates back to December 1, 2008.
`
`2. Opposer is the owner of the U.S. Trademark Registration No. 3667105 for the
`
`DYNEEMA THE WORLD'S STRONGEST FIBER trademark for:
`
`IC 009: Protection devices for personal use against accidents, namely,
`gloves, clothing and garments, commercial safety nets, trawl safety nets,
`aquaculture safety nets used in commercial fishing and cargo safety nets
`used in transport, protective helmets; protective clothing; bullet resistant
`and blast resistant clothing.
`
`IC 012: Car parts for the protection against accidents, namely, vehicle
`armor panels; fitted liners for the cargo area of vehicles and armor panels
`for military vehicles, police vehicles, VIP vehicles.
`
`IC 018: Traveling bags.
`
`IC 022: Nets for fishing/aquaculture, yachting sails and lines.
`
`IC 024: Non-woven textile fabrics, namely, yachting sail cloth, textile
`substitute materials made from synthetic materials, knitted fabric, non-
`woven fabrics for use in the manufacture of container door curtains.
`
`IC 025: Headwear, footwear; gloves; fencing suits.
`
`IC 028: Sporting goods, namely, archery bow strings and kite lines; lines
`for fishing, landing net for anglers; strings for rackets; gut for fishing,
`waterski and wakeboard ropes, rock climbing fasteners and harnesses.
`
`
`This registration is valid, subsisting, unrevoked, and uncancelled. Opposer has duly
`
`registered the DYNEEMA THE WORLD'S STRONGEST FIBER trademark for the
`
`above-identified goods in the registration. The Registration dates back to October 19,
`
`2006, with first use dating back to 2003.
`
`
`
`3
`
`

`

`3. Opposer is the owner of the U.S. Trademark Registration No. 4553797 for the
`
`DYNEEMA trademark for:
`
`IC 025: Clothing, namely, shirts, pants, jackets, vests, pullovers,
`sweatshirts, shorts, athletic sleeves, leggings, chaps, skirts, blouses;
`headgear, namely, headwear, hats, caps, bandannas, sun-visors, helmet
`liners; footwear; clothing, namely, gloves; overshoes and overboots;
`footwear parts, namely, heels, soles and protective end pieces in the nature
`of, namely, toe caps, whether removable or not; socks; boot liners; ski-
`boots; non-slip devices for footwear, namely, Non-slip soles for footwear,
`rubber shoe soles; motorcycle apparel, namely, motorcycle gloves,
`motorcycle boots, motorcycle jackets, motorcycle pants, motorcycle rain
`suits; protective motorcycle apparel, namely, motorcycle gloves,
`motorcycle boots, motorcycle jackets, motorcycle pants, motorcycle rain
`suits.
`
`
`This registration is valid, subsisting, unrevoked, and uncancelled. Opposer has duly
`
`registered the DYNEEMA trademark for the above-identified goods in the
`
`registration. The Registration dates back to April 8, 2013.
`
`4. Opposer is the owner of the U.S. Trademark Registration No. 3987978 for the
`
`DYNEEMA trademark for:
`
`IC 028: Sporting goods, namely, archery bow strings, kite lines, nets for
`sports, namely, tennis, volleyball, basketball; yachting sails; lines for
`fishing, lures for hunting or fishing, fishing tackle, landing net for anglers,
`gut for fishing; strings for rackets; water-ski and wakeboard ropes;
`fasteners and harnesses for rock climbers, namely, climbers' harnesses,
`and climbing cams and anchors made of ultra high molecular weight
`polyethylene; hockey sticks, safety devices for use in sports, namely,
`fishing safety harnesses, harnesses for sailboards, snowboards, skis, and
`skateboards, water ski tow harnesses, adjustable harnesses to correct one's
`posture for sports or other physical training purposes, knee pads for
`athletic use, elbow pads for athletic use, shoulder pads for athletic use,
`sports equipment for boxing and martial arts, namely, boxing gloves,
`boxing bags, punching mitts, belly protectors, groin protectors and shin
`guards, face masks for baseball, hockey, lacrosse; climbing harnesses;
`straps for use in sports, namely, straps used for yoga and other fitness
`activities and for carrying a yoga mat, mountaineering binding straps,
`restraint straps for body boards, sail board foot straps, sports fitness
`restraint straps for running in tandem or pairs; water skis, surfboards,
`snowboards, bob-sleighs, body boards, ice skates; fencing masks, fencing
`
`
`
`4
`
`

`

`gauntlets, fencing gloves; baseball gloves, golf gloves; flippers for
`swimming.
`
`
`This registration is valid, subsisting, unrevoked, and uncancelled. Opposer has duly
`
`registered the DYNEEMA trademark for the above-identified goods in the
`
`registration. The Registration dates back to March 4, 2010.
`
`5. Opposer is the owner of the U.S. Trademark Registration No. 2078586 for the
`
`DYNEEMA trademark for:
`
`IC 017: Plastics in the form of fibers for general industrial use.
`
`IC 022: Plastic fibers for textile use.
`
`
`This registration is valid, subsisting, unrevoked, incontestable, and uncancelled.
`
`Opposer has duly registered the DYNEEMA trademark for the above-identified
`
`goods in the registration. The Registration dates back to December 1, 1995, with first
`
`use dating back to 1993.
`
`6. Opposer is the owner of the U.S. Trademark Registration No. 3123827 for the
`
`DYNEEMA trademark for:
`
`IC 017: Semi-processed plastic substances in the form of fibers.
`
`IC 022: Fibers for textile use; string, ropes and cords.
`
`IC 023: Threads and filaments for textile use.
`
`IC 024: Textile products for industrial use, namely, ballistic resistant
`fabrics for use in the production of blast proof clothing, garments and
`shields; woven or non-woven polyethylene fabrics for use in the
`manufacture of protective clothing and helmets and in hard armor.
`
`
`This registration is valid, subsisting, unrevoked, incontestable, and uncancelled.
`
`Opposer has duly registered the DYNEEMA trademark for the above-identified
`
`goods in the registration. The Registration dates back to December 23, 2004.
`
`
`
`5
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`7. Opposer is the owner of the U.S. Trademark Registration No. 3047274 for the
`
`DYNEEMAPURITY trademark for:
`
`IC 010: MEDICAL AND SURGICAL PRODUCTS, NAMELY,
`SURGICAL COMPRESSES MADE FROM FIBER, YARN AND
`THREAD; SURGICAL MESHES FOR USE IN SOFT TISSUE REPAIR;
`SURGICAL IMPLANTS COMPRISING ARTIFICIAL MATERIAL
`INCLUDING POLYETHYLENE FIBERS; SURGICAL THREAD
`COMPRISED OF POLYETHYLENE FIBERS; AND SUTURES
`COMPRISED OF POLYETHYLENE FIBERS.
`
`IC 017: POLYETHYLENE FIBERS AND THREADS FOR USE IN THE
`MANUFACTURE OF BIOLOGICAL, BIOMEDICAL AND MEDICAL
`PRODUCTS AND DEVICES.
`
`IC 022: SYNTHETIC FIBERS FOR USE IN THE MANUFACTURE OF
`MEDICAL IMPLANTS AND DEVICES.
`
`IC 023: SYNTHETIC YARNS FOR USE IN THE MANUFACTURE OF
`BIOLOGICAL, BIOMEDICAL AND MEDICAL PRODUCTS AND
`DEVICES.
`
`
`This registration is valid, subsisting, unrevoked, incontestable, and uncancelled.
`
`Opposer has duly registered the DYNEEMAPURITY trademark for the above-
`
`identified goods in the registration. The Registration dates back to June 24, 2002.
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`8. Opposer owns a family of DYNEEMA trademarks, including the DYNEEMA,
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`DYNEEMA THE WORLD’S STRONGEST FIBER, and DYNEEMAPURITY
`
`trademarks of the U.S. Trademark Registrations identified above for the goods
`
`identified therein. Opposer’s family of DYNEEMA trademarks are also protected by
`
`Common Law. Opposer uses and used Opposer’s DYNEEMA trademarks and family
`
`of DYNEEMA trademarks in US commerce prior to any date of first use in US
`
`commerce or US application filing date upon which Applicant can rely for the
`
`DYNESTRONG trademark that is the subject of U.S. Application No. 86/687,132.
`
`
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`6
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`

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`9. For over a decade and well before 2011, Opposer (including its licensees) has used
`
`the DYNEEMA trademark and/or the DYNEEMA THE WORLD’S STRONGEST
`
`FIBER trademark in US commerce with:
`
`- protective work gloves in International Class 9,
`
`- gloves and other clothing in International Class 25,
`
`- high strength fibers (from which protective work gloves are made) in
`
`International Classes 17 and 22,
`
`-
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`threads and filaments for textile use in International Class 23,
`
`- woven or non-woven polyethylene fabrics for use in the manufacture of protective
`
`clothing in International Class 24, and
`
`- many other goods identified above.
`
`10. Opposer has prior rights in the DYNEEMA trademark and the DYNEEMA THE
`
`WORLD’S STRONGEST FIBER trademark compared to any alleged rights that
`
`Applicant has in the DYNESTRONG trademark.
`
`11. Applicant has filed a US application to register the DYNESTRONG trademark for
`
`"Protective work gloves” in International Class 9. Applicant filed the application on
`
`July 8, 2015, which the USPTO has identified as Application No. 86/687,132. In the
`
`Application, Applicant claims a first use date of May 1, 2011, but this date has not
`
`been confirmed by Opposer.
`
`12. Significantly, in the marketing and sale of Applicant’s protective work gloves under
`
`the DYNESTRONG trademark, Applicant states that its gloves are made from
`
`“Dynema Material” – in an illegal and unlicensed reference to Opposer’s
`
`DYNEEMA trademark and Opposer’s DYNEEMA trademarked materials.
`
`
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`7
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`

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`13. Upon information and belief, Applicant designed the DYNESTRONG trademark to
`
`be similar to and to play off the fame, strength, and goodwill of Opposer’s
`
`DYNEEMA trademark and DYNEEMA THE WORLD’S STRONGEST FIBER
`
`trademark, and Opposer’s family of DYNEEMA trademarks (DYNEEMA,
`
`DYNEEMA THE WORLD’S STRONGEST FIBER, and DYNEEMAPURITY).
`
`14. Applicant's DYNESTRONG trademark so resembles Opposer's DYNEEMA
`
`trademark, Opposer’s DYNEEMA THE WORLD’S STRONGEST FIBER
`
`trademark, and/or Opposer’s family of DYNEEMA trademarks as to be likely to
`
`cause confusion, mistake, or deception within the meaning of Section 2(d) of the
`
`Trademark Act. Applicant is attempting to register its confusingly similar trademark
`
`for the same, similar, and/or related goods. Consumers are likely to be confused
`
`and/or are likely to mistakenly think that Applicant and Opposer are the same or are
`
`affiliated in some fashion, and/or that Opposer has provided some type of license or
`
`authorization to Applicant. Consumers could also mistakenly believe that the
`
`DYNESTRONG trademarked products are extensions of Opposer’s line of
`
`DYNEEMA trademarked products, that the DYNESTRONG trademarked products
`
`contain or are made from Opposer’s DYNEEMA trademarked materials, and/or that
`
`the DYNESTRONG trademark is part of Opposer’s family of DYNEEMA
`
`trademarks (DYNEEMA, DYNEEMA THE WORLD’S STRONGEST FIBER, and
`
`DYNEEMAPURITY).
`
`15. Opposer’s DYNEEMA trademarks are famous and were famous in at least the
`
`protective work gloves area before the first DYNESTRONG trademark use or
`
`application filing of the Applicant. Applicant’s DYNESTRONG trademark is likely
`
`
`
`8
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`

`

`to dilute the fame and strength of Opposer’s DYNEEMA trademarks. Thus, there is a
`
`likelihood of dilution, to the detriment of Opposer.
`
`16. Opposer will be harmed by Applicant’s acts related to U.S. Trademark Application
`
`No. 86/687,132, including the likelihood of confusion and the likelihood of dilution
`
`identified above.
`
`
`
`WHEREFORE, Opposer prays that the opposition be sustained and that registration to
`
`Applicant be refused.
`
`Date: March 23, 2016
`
`
`
`Respectfully submitted,
`
`
`
`
`
`
`
`
`
`
`/Duane M. Byers/
`DUANE M. BYERS
`
`NIXON & VANDERHYE, P.C.
`901 NORTH GLEBE ROAD, 11TH FLOOR
`ARLINGTON, VIRGINIA 22203
`PHONE: 1-703-786-7421
`AUTHORIZED E-MAIL:
`NIXONPTOMAIL@NIXONVAN.COM
`
`ATTORNEYS FOR OPPOSER,
`DSM IP ASSETS B.V.
`
`
`CERTIFICATE OF SERVICE
`
`
`IT IS HEREBY CERTIFIED THAT A TRUE COPY OF THE FOREGOING WAS SERVED
`ON APPLICANT BY DEPOSITING SAME IN THE UNITED STATES MAIL, FIRST
`CLASS, POSTAGE PRE-PAID, ON THIS DATE, ADDRESSED TO APPLICANT'S PERSON
`AND ADDRESS OF RECORD:
`
`
`
`Cherry H. Abernathy
`RAGS UNLIMITED, INC.
`PO Box 25
`Lowell, NC 28098
`
`
`
`/Duane M. Byers/
`
`
`
`9
`
`