Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA798883
`02/01/2017
`
`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
`
`California Interscholastic Federation
`
`Granted to Date
`of previous ex-
`tension
`
`Address
`
`Attorney informa-
`tion
`
`02/01/2017
`
`4658 Duckhorn Drive
`Sacramento, CA 95834
`UNITED STATES
`
`LORI LEE YAMATO
`KNOBBE MARTENS OLSON & BEAR
`2040 MAIN STREET14TH FLOOR
`IRVINE, CA 92614
`UNITED STATES
`efiling@knobbe.com, lori.yamato@knobbe.com, elenore.niu@knobbe.com
`Phone:(949) 760-0404
`
`Applicant Information
`
`Application No
`
`87015382
`
`Publication date
`
`10/04/2016
`
`Opposition Filing
`Date
`
`Applicant
`
`02/01/2017
`
`Opposition Peri-
`od Ends
`
`02/01/2017
`
`Xiamen Jiumax EC Co., Ltd.
`D38, 10/F, No.1036, Xiahe Road
`Xiamen, Fujiang, 362000
`CHINA
`
`Goods/Services Affected by Opposition
`
`Class 018. First Use: 2016/01/24 First Use In Commerce: 2016/01/24
`All goods and services in the class are opposed, namely: Purses; Wallets; Athletic bags; Belt bags;
`Card wallets; Courier bags; Duffel bags; Grip bags; Gym bags; Key bags; Key wallets; Kit bags;
`Leather bags; Pocket wallets; School bags; Shoulder bags; Sports bags; Travel bags; Travelling
`bags; Waist bags
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`Other
`
`Common law rights as asserted in the Notice of
`Opposition
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`
`1691152
`
`Application Date
`
`06/06/1988
`
`

`

`Registration Date
`
`06/09/1992
`
`Word Mark
`
`Design Mark
`
`CIF
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 006. First use: First Use: 1950/00/00 First Use In Commerce: 1950/00/00
`KEY CHAINS MADE OF METAL
`Class 014. First use: First Use: 1950/00/00 First Use In Commerce: 1950/00/00
`LAPEL JEWELRY PINS, JEWELRY PENDANTS, TIE CLASPS, AND RINGS
`Class 016. First use: First Use: 1950/00/00 First Use In Commerce: 1950/00/00
`FLYERS, BROCHURES, MANUALS, LEAFLETS AND PROGRAMS DEALING
`WITH SPORTING EVENTS;POSTERS, BUMPER STICKERS, ADMISSION
`TICKETS, STATISTIC SHEETS, RECORD BOOKS ANDPRESS RELEASE
`FORMS
`Class 020. First use: First Use: 1950/00/00 First Use In Commerce: 1950/00/00
`PRIZE RIBBONS, PRIZE MEDALS AND TROPHY PLAQUES
`Class 024. First use: First Use: 1988/03/00 First Use In Commerce: 1988/03/00
`[TOWELS AND BLANKETS]
`Class 025. First use: First Use: 1950/00/00 First Use In Commerce: 1950/00/00
`T-SHIRTS, TANK TOPS, JACKETS, GYM SHORTS, SWEATSHIRTS, HATS,
`SWEATERS, VISORS, CAPS, BANDANNAS, SWEATPANTS AND SOCKS
`
`U.S. Registration
`No.
`
`4174419
`
`Registration Date
`
`07/17/2012
`
`Word Mark
`
`CIF
`
`Application Date
`
`09/16/2011
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of the stylized wording "CIF".
`
`Class 041. First use: First Use: 1950/00/00 First Use In Commerce: 1950/00/00
`Encouraging participation in high school sports competitions and events by es-
`tablishing rules and providing governance for the competitions and events;
`providing a website featuring information relating to high school sports; and
`providingon-line newsletters in the field of high school sports
`
`U.S. Registration
`No.
`
`4822958
`
`Registration Date
`
`09/29/2015
`
`Word Mark
`
`Design Mark
`
`CIF
`
`Application Date
`
`02/03/2014
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 025. First use: First Use: 1950/00/00 First Use In Commerce: 1950/00/00
`Clothing, namely, tops, bottoms, T-shirts, jackets, and socks; Headgear, namely,
`hats, visors, caps, and bandannas
`
`

`

`Class 041. First use: First Use: 1950/00/00 First Use In Commerce: 1950/00/00
`Encouraging participation in high school sports competitions and events by es-
`tablishing rules and providing governance for the competitions and events;
`providing a website featuring information relating to high school sports; providing
`on-line newsletters in the field of high school sports; entertainment services in
`the nature of high school sports competitions and exhibitions; organizing and
`conducting high school sports competitions and exhibitions featuring a wide vari-
`etyof high school sports and high school sports events
`
`Attachments
`
`73732527#TMSN.png( bytes )
`85424619#TMSN.png( bytes )
`86182631#TMSN.png( bytes )
`Notice of Opposition - CIFCA.013TIS.pdf(1100446 bytes )
`
`Signature
`
`Name
`
`Date
`
`/elenore niu/
`
`Elenore Niu
`
`02/01/2017
`
`

`

`CIFCA.O13T|S
`
`TTAB
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`California Interscholastic Federation,
`
`Oppose“
`
`v.
`
`Xiamen Jiumax EC Co., Ltd.
`Applicant.
`
`) Opposition No.:
`)
`) Serial No.: 87/015382
`)
`
`; Mark; NINI: CII'
`;
`
`NOTICE OF OPPOSITION
`
`Commissioner for Trademarks
`PO. Box 1451
`
`Alexandria, VA 22313—1451
`
`Dear Sir or Madam:
`
`Opposer, California
`
`interscholastic
`
`Federation,
`
`a California
`
`non-profit
`
`organization,
`
`located and doing business at 4658 Duckhorn Drive, Sacramento,
`
`California 95834 (“Opposer”), believes it will be damaged by registration of the mark
`
`shown in Application Serial No. 87/015382 for
`
`the mark
`
`CIF (the
`
`“Application”), filed on April 27, 2016 by Xiamen Jiumax EC Co., Ltd. (“Applicant”), and
`
`hereby opposes the same. A description of Applicant’s Application is as follows:
`
`Mark
`Serial No.
`
`Filed
`Published
`Class
`
`Goods
`
`Basis
`
`CII:
`:
`: 87/015382
`
`: April 27, 2016
`: October 4, 2016
`:
`18
`
`: Purses; wallets; athletic bags; belt bags; card wallets;
`courier bags; duffel bags; grip bags; gym bags; key bags;
`key wallets; kit bags; leather bags; pocket wallets; school
`bags; shoulder bags; sports bags; travel bags;
`travelling
`bags; waist bags.
`'
`: Use
`
`First Use
`
`:
`
`January 24,2016
`
`

`

`As grounds for opposition, it is alleged:
`
`1.
`
`Opposer, whose full name is often abbreviated “CIF”, was established
`
`over 100 years ago and is a governing body for high school athletics in the state of
`
`California. Opposer organizes and oversees high school sporting competitions and
`
`events, and encourages participation in high school athletics,
`
`including holding state
`
`and regional championships and conferring awards to teams, coaches and individual
`
`athletes. Opposer also provides information in the field of high school sports via its
`
`website and newsletter, and offers sports-related and school—related goods, equipment
`
`and paraphernalia to support and promote its purpose. Receiving CIF recognition is a
`
`respected and well-esteemed distinction.
`
`2.
`
`For many years prior to the filing date of Applicant’s Application, Opposer
`
`has designed, developed, marketed, promoted and sold a variety of products and
`
`offered a variety of services in connection with the name and mark CIF,
`and other marks containing or consist’i‘hg of the term CIF (collectively “the CIF Marks”)
`throughout the United States.
`3.
`Among the goods and services that Opposer has offered and is offering in
`
`connection with the CIF Marks are products that promote or encourage participation in‘
`
`sports or are purchaSed by schools and student athletes, such as, duffel bags,
`
`backpacks, gym bags, athletic bags, sports equipment bags, key chains made of metal,
`
`lapel
`
`jewelry pins,
`
`jewelry pendants,
`
`tie Clasps,
`
`rings,
`
`flyers, brochures, manuals,
`
`leaflets and programs dealing with sporting events, posters, bumper stickers, admission
`
`tickets, statistic sheets, record b00ks, press release forms, prize ribbons, prize medals,
`
`trophy plaques, clothing,
`
`tops, b'ottoms, T-shirts,
`
`tank tops, jackets, sweaters, gym
`
`shorts, sweatpants, sweatshirts, socks, headgear, hats, visors, caps, bandannas,
`
`-2-
`
`

`

`encouraging participation in high school sports competitions and events by establishing
`rules and providing governance for the competitions and events, providing a website
`
`featuring information relating to high school sports, providing on—line newsletters in the .
`
`field of high school sports, entertainment services in the nature of high school sports
`
`competitions
`
`and
`
`exhibitions,
`
`organizing
`
`and
`
`conducting
`
`high
`
`school
`
`sports
`
`competitions and exhibitions featuring a wide variety of high school sports and high
`
`school sports events (“Opposer’s Goods and Services”).
`
`4.
`
`Opposer is the owner of and relies on US. Registration No. 1,691,152,
`
`(the “’152 Registration”) for the mark
`
`for “key chains made of metal” in Class 6;
`
`“lapel jewelry pins, jewelry pendants, tie Clasps, and rings” in Class 14; “flyers, brochures,
`
`manuals,
`
`leaflets and programs dealing with sporting events; posters, bumper stickers,
`
`admission tickets, statistic sheets, record books and press release forms” in Class 16;
`
`“prize ribbons, prize medals and trophy plaques” in Class 20; and “T-shirts, tank tops,
`
`jackets, gym shorts, sweatshirts, hats, sweaters, visors, caps, bandannas, sweatpants
`
`and socks” in Class 25; which was registered on the Principal Register on June 9, 1992
`
`and subsequently renewed. The ’152 Registration is based on an application filed in the
`
`United
`
`States
`
`Patent
`
`7 and
`
`Trademark
`
`Office
`
`(“PTO”)
`
`on
`
`June 6, 1988 and claims a date of first use of 1950. Thus, the filing date, registration
`
`date, and date of first use of the ‘152 Registration are all well prior to the filing date and
`
`alleged date of first use of Applicant’s Application. A true and correct copy of the
`
`specifics of the ’152 Registration obtained from the PTO’s TSDR database is attached
`
`hereto as Exhibit 1 and made of record.
`
`5.
`
`Opposer is the owner of and relies on US. Registration No. 4,174,419 (the
`
`

`

`“’419 Registration”) for the mark
`
`for “encouraging participation in high school
`
`sports competitions and events by establishing rules and providing governance for the
`
`competitions and events; providing a website featuring information relating to high
`
`school sports; and providing on—line newsletters in the field of high school sports” in
`
`Class 41, which was registered on the Principal Register on July 17, 2012. The ’419
`
`Registration is based on an application filed in the PTO on September 16, 2011 and
`
`claims a date of first use of 1950. Thus, the filing date, registration date, and date of first
`
`use of the ‘419 Registration are all well prior to the filing date and alleged date of first
`
`use of Applicant’s Application. A true and correct copy of the specifics of the ’419
`
`Registration obtained from the PTO’s TSDR database is attached hereto as Exhibit 2
`
`and made of record.
`
`6.
`
`Opposer is the owner of and relies on US. Registration No. 4,822,958 (the
`
`“’958 Registration”) for the mark CIF for “Clothing, namely,
`tops, bottoms, T—shirts,
`jackets, and socks; headgear, namely, hats, visors, caps, and bandannas” in Class 25;
`
`and
`
`encouraging participation in high school sports competitions and events by
`
`establishing rules and providing governance for the competitions and events; providing a
`
`website featuring information relating to high school sports; providing on-line newsletters
`
`in the field of high school sports; entertainment services in the nature of high school
`sports competitions and exhibitions; organizing and conducting high school sports
`
`competitions and exhibitions featuring a wide variety of high school sports and high
`
`school sports events” in Class 41, which was registered on the Principal Register on
`
`September 29, 2015. The ’958 Registration is based on an application filed in the PTO on
`
`February 3, 2014 and claims a date of first use of 1950. Thus, the filing date, registration
`
`date, and date of first use of the ’958 Registration are all well prior to the filing date and
`
`-4-
`
`

`

`alleged date of first use of Applicant’s Application. A true and correct copy of the
`
`specifics of the ’958 Registration obtained from the PTO’s TSDR database is attached
`
`hereto as Exhibit 3 and made of record.
`
`7.
`
`Opposer
`
`is
`
`the owner of
`
`the US. Registrations specified above in
`
`Paragraphs 4—6
`
`(collectively “Opposer’s Federal Registrations”). Opposer’s Federal
`
`Registrations are valid, subsisting, unrevoked and uncancelled; as such they constitute
`
`prime m evidence of the validity of the registered marks and of the registrations
`
`thereof, of Opposer’s ownership of the marks shown therein and of Opposer’s exclusive
`
`,
`
`right to use the marks in commerce in connection with the goods and services named
`
`therein. Opposer’s Federal Registrations also constitute constructive use of the CIF
`
`Marks, conferring to Opposer a right of priority nationwide in effect, and notice to
`
`Applicant of Opposer’s claim of ownership of the marks shown therein; all as provided in
`Section 7(b), 22 and 33(a) of the Trademark Act of 1946, as amended.
`
`8.
`
`Since long prior to the filing date of Applicant’s Application, Opposer has
`
`spent considerable time, effort and money in developing its reputation under the CIF
`
`Marks. As a result of this investment and the widespread recognition of Opposer’s
`
`Goods and Services, Opposer has developed a tremendOUS amount of goodwill and
`
`recognition in the CIF Marks.
`
`9.
`
`Since long prior to the filing date of Applicant’s Application, Opposer has
`
`consistently used and promoted the CIF Marks in connection with Opposer’s Goods and
`
`Services. The CIF Marks, by virtue of substantial use, have acquired great value as
`
`indicators of Opposer and Opposer’s Goods and Services, and distinguishes them from
`
`the goods and services of others.
`
`10.
`
`Opposer has continuously and substantially used the CIF marks on or in
`
`connection with Opposer’s Goods and Services. By reason of Opposer’s continuous
`
`-5-
`
`

`

`and substantial use of the CIF marks on or in connection with Opposer’s Goods and
`
`Services, in addition to the protection afforded by the federal registrations, Opposer has
`
`extensive, non—registered statutory and common law rights
`
`in its CIF marks in
`
`connection with Opposer’s Goods and Services, and relies on its extensive common
`
`law rights in its CIF marks as a basis for this Opposition.
`
`11.
`
`Since long prior to the filing date of Applicant’s Application, Opposer has
`
`continuously used and promoted the CIF Marks in interstate commerce in connection
`
`with Opposer’s Goods and Services. By virtue of Opposer’s extensive, continuous and
`
`substantial use, the CIF Marks have become well-known, well—recognized, and inherently
`
`distinctive identifiers of Opposer and Opposer’s Goods and Services, and distinguish
`
`Opposer‘s Goods and Services from the goods and services of others. As a result,
`
`Opposer has built up, at great expense and effort, valuable goodwill in the CIF Marks.
`
`12.
`
`Opposer’s filing dates, registration dates, dates of first use and rights in the
`
`CIF Marks are all prior and superior to the mark in Applicant’s Application.
`
`13.
`
`Applicant has no license, consent or permission from Opposer to use or
`
`A
`
`register the CIF Marks or the mark in Applicant’s Application.
`
`14.
`
`Applicant markets and sells a variety of bags, wallets, and accessories.
`
`Applicant alleges use of the mark NiNE C": in Applicant’s Application in connection
`
`with a variety of bags, wallets, and accessories, including athletic bags, duffel bags, gym
`
`bags, sports bags and school bags.
`
`15.
`
`Applicant's Application was filed on April 27, 2016, and Applicant alleges
`
`first use Of the
`
`mark on January 24, 2016,
`
`16.
`
`Opposer used the CIF Marks prior to the filing date and alleged first use
`
`date of Applicant’s Application, and Opposer’s federal and common law rights in its CIF
`
`-6-
`
`

`

`Marks are prior to and superior to the filing date of Applicant’s Application and alleged
`
`first use date of the mark in Applicant’s Application.
`
`17.
`
`The
`
`C": mark shown in Applicant’s Application is highly similar to
`
`Opposer’s CIF Marks as it incorporates the entirety of Opposer’s CIF mark and creates
`
`the same connotation and commercial impression.
`
`18.
`
`The
`
`C": mark shown in Applicant’s Application is highly similar to
`
`the mark shown in the ’152 Registration as it incorporates the entirety of Opposer’s ClF
`
`mark and creates the same connotation and commercial impression.
`
`19.
`
`The NiNE C“: mark shown in Applicant’s Application is highly similar to
`
`the mark shown in the ’419 Registration as it incorporates the entirety of Opposer’s CIF
`
`mark and creates the same connotation and commercial impression.
`
`20.
`
`The
`
`C": mark shown in Applicant’s Application is highly similar to
`
`the mark shown in the ’958 Registration as it incorporates the entirety of Opposer’s CIF
`
`mark and creates the same connotation and commercial impression.
`
`21.
`
`The goods listed in Applicant’s Application are highly similar and closely
`
`related to and complimentary to Opposer's Goods and Services, including the goods and
`services listed in Opposer’s Federal Registrations.
`
`22.
`Application.
`
`There are no limitations as to the channels of
`I
`r
`
`trade in Applicant’s
`
`23.
`
`There are no limitations as to the channels of trade in Opposer’s Federal
`
`Registrations.
`
`24.
`
`If Applicant
`
`is permitted to register
`
`the mark shown in Applicant’s
`
`Application, Applicant’s corresponding prima facie exclusive right to use the
`
`C":
`
`mark nationwide will conflict with Opposer’s lawful and prima facie exclusive right to use
`
`-7-
`
`

`

`the CIF Marks nationwide.
`
`25.
`
`Opposer will be damaged by registration of the Application in that the
`
`mark so resembles Opposer’s CIF Marks registered in the United States
`
`Patent and Trademark Office, and in which Opposer owns common law trademark rights,
`
`as to be likely, when used on or in connection with the goods as they are identified in the
`
`Application, to cause confusion, or to cause mistake or to deceive within the meaning of
`
`Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d).
`
`26.
`
`In view of Opposer’s prior rights in its CIF Marks, Applicant is not entitled to
`
`federal registration of the
`
`c“: mark pursuant to Section 2(d) of the Trademark
`
`Act, 15 U.S.C.§1052(d).
`
`WHEREFORE, Opposer requests that Applicant’s Application be rejected and
`
`stricken, that no registration be issued thereon to Applicant, and that this Opposition be
`
`sustained in Opposer’s favor.
`
`Please charge Deposit Account No. 11-1410 to cover the opposition fee and any
`
`additional fees which may be required, or credit any overpayment to this account.
`
`Respectfully submitted,
`
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`
` Dated: February 1, 2017
`
`Lori Lee Yamato
`
`Elenore Niu
`
`2040 Main Street, 14th Floor
`
`Irvine, CA 92614
`Phone: 949—760—0404
`
`efiling@knobbe.com
`Attorneys for Opposer,
`California Interscholastic Federation
`
`-8-
`
`25122784
`013017
`
`

`

`
`
`EXHIBIT 1
`EXHIBIT 1
`
`

`

`Trademark Status & Document Retrieval
`
`http://tsdr.uspto.gov/#caseNumber=73732527&caseType=SERIAL_NO...
`
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`
`STATUS
`
`DOCUMENTS
`
`Back to Search
`
`Print
`
`Generated on: This page was generated by TSDR on 2017-02-01 17:27:26 EST
`
`Mark: CIF
`
`US Serial Number: 73732527
`
`Application Filing Date: Jun. 06, 1988
`
`US Registration Number: 1691152
`
`Registration Date: Jun. 09, 1992
`
`LIVE/REGISTRATION/Issued and Active
`
`The trademark application has been registered with the Office.
`
`Register: Principal
`
`Mark Type: Trademark
`
`TM5 Common Status
`
`Descriptor:
`
`Status: The registration has been renewed.
`
`Status Date: Sep. 27, 2011
`
`Publication Date: Mar. 17, 1992
`
`Mark Information
`
`Mark Literal Elements: CIF
`
`Standard Character Claim: No
`
`Mark Drawing Type: 3 - AN ILLUSTRATION DRAWING WHICH INCLUDES WORD(S)/ LETTER(S)/NUMBER(S)
`
`Design Search Code(s): 26.01.11 - Circles comprised of animals; Circles comprised of geometric figures; Circles comprised of humans; Letters, numerals, punctuation,
`
`geometric figures, objects, humans, plants or animals comprising a circle; Circles comprised of plants; Circles comprised of punctuation; Circles
`
`comprised of letters or numerals
`
`Goods and Services
`
`Note:
`
`The following symbols indicate that the registrant/owner has amended the goods/services:
`
`Brackets [..] indicate deleted goods/services;
`
`Double parenthesis ((..)) identify any goods/services not claimed in a Section 15 affidavit of incontestability; and
`
`Asterisks *..* identify additional (new) wording in the goods/services.
`
`For: KEY CHAINS MADE OF METAL
`
`International Class(es): 006 - Primary Class
`
`U.S Class(es): 002, 012, 013, 014, 023, 025, 050
`
`Class Status: ACTIVE
`
`Basis: 1(a)
`
`First Use: 1950
`
`Use in Commerce: 1950
`
`For: LAPEL JEWELRY PINS, JEWELRY PENDANTS, TIE CLASPS, AND RINGS
`
`International Class(es): 014 - Primary Class
`
`U.S Class(es): 002, 027, 028, 050
`
`Class Status: ACTIVE
`
`Basis: 1(a)
`
`First Use: 1950
`
`Use in Commerce: 1950
`
`For: FLYERS, BROCHURES, MANUALS, LEAFLETS AND PROGRAMS DEALING WITH SPORTING EVENTS; POSTERS, BUMPER STICKERS,
`
`ADMISSION TICKETS, STATISTIC SHEETS, RECORD BOOKS AND PRESS RELEASE FORMS
`
`1 of 4
`
`2/1/2017 2:30 PM
`
`

`

`Trademark Status & Document Retrieval
`
`http://tsdr.uspto.gov/#caseNumber=73732527&caseType=SERIAL_NO...
`
`International Class(es): 016 - Primary Class
`
`U.S Class(es): 002, 005, 022, 023, 029, 037, 038, 050
`
`Class Status: ACTIVE
`
`Basis: 1(a)
`
`First Use: 1950
`
`Use in Commerce: 1950
`
`For: PRIZE RIBBONS, PRIZE MEDALS AND TROPHY PLAQUES
`
`International Class(es): 020 - Primary Class
`
`U.S Class(es): 002, 013, 022, 025, 032, 050
`
`Class Status: ACTIVE
`
`Basis: 1(a)
`
`First Use: 1950
`
`For:
`
`[TOWELS AND BLANKETS]
`
`Use in Commerce: 1950
`
`International Class(es): 024 - Primary Class
`
`U.S Class(es): 042, 050
`
`Class Status: SECTION 8 - CANCELLED
`
`Basis: 1(a)
`
`First Use: Mar. 1988
`
`Use in Commerce: Mar. 1988
`
`For: T-SHIRTS, TANK TOPS, JACKETS, GYM SHORTS, SWEATSHIRTS, HATS, SWEATERS, VISORS, CAPS, BANDANNAS, SWEATPANTS AND
`
`SOCKS
`
`International Class(es): 025 - Primary Class
`
`U.S Class(es): 022, 039
`
`Class Status: ACTIVE
`
`Basis: 1(a)
`
`First Use: 1950
`
`Basis Information (Case Level)
`
`Filed Use: Yes
`
`Filed ITU: No
`
`Filed 44D: No
`
`Filed 44E: No
`
`Filed 66A: No
`
`Use in Commerce: 1950
`
`Currently Use: Yes
`
`Currently ITU: No
`
`Currently 44D: No
`
`Currently 44E: No
`
`Currently 66A: No
`
`Amended Use: No
`
`Amended ITU: No
`
`Amended 44D: No
`
`Amended 44E: No
`
`Filed No Basis: No
`
`Currently No Basis: No
`
`Current Owner(s) Information
`
`Owner Name: CALIFORNIA INTERSCHOLASTIC FEDERATION
`
`Owner Address: 4658 Duckhorn Drive
`
`Sacramento, CALIFORNIA UNITED STATES 95834
`
`Legal Entity Type: NON-PROFIT ORGANIZATION
`
`State or Country Where
`
`CALIFORNIA
`
`Organized:
`
`Attorney/Correspondence Information
`
`Attorney of Record
`
`Attorney Name: Lori Lee Yamato
`
`Docket Number: CIFCA.001T
`
`Attorney Primary Email
`
`efiling@kmob.com
`
`Attorney Email Authorized: Yes
`
`Address:
`
`Correspondent
`
`Correspondent
`
`Lori Lee Yamato
`
`Name/Address:
`
`KNOBBE MARTENS OLSON & BEAR LLP
`
`2040 Main Street, 14th Floor
`
`Irvine, CALIFORNIA UNITED STATES 92614
`
`Phone:
`
`(949) 760-0404
`
`Fax:
`
`(949) 760-9502
`
`Correspondent e-mail: efiling@kmob.com
`
`Domestic Representative - Not Found
`
`Correspondent e-mail
`
`Yes
`
`Authorized:
`
`2 of 4
`
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`
`

`

`Trademark Status & Document Retrieval
`
`http://tsdr.uspto.gov/#caseNumber=73732527&caseType=SERIAL_NO...
`
`Prosecution History
`
`Date
`
`Jan. 12, 2017
`
`Jul. 24, 2012
`
`Sep. 27, 2011
`
`Sep. 27, 2011
`
`Sep. 15, 2011
`
`Sep. 15, 2011
`
`Oct. 17, 2007
`
`Dec. 12, 2002
`
`Dec. 12, 2002
`
`Dec. 12, 2002
`
`Oct. 09, 2002
`
`Jun. 10, 2002
`
`Feb. 10, 1999
`
`Dec. 28, 1998
`
`Sep. 08, 1998
`
`Jun. 12, 1998
`
`Jun. 09, 1992
`
`Mar. 17, 1992
`
`Feb. 14, 1992
`
`Sep. 26, 1991
`
`Sep. 13, 1991
`
`Jul. 10, 1991
`
`Jun. 03, 1991
`
`May 01, 1991
`
`Apr. 24, 1991
`
`Feb. 11, 1991
`
`Aug. 07, 1990
`
`Jun. 11, 1990
`
`Dec. 07, 1989
`
`Sep. 28, 1989
`
`Mar. 27, 1989
`
`Feb. 15, 1989
`
`Feb. 15, 1989
`
`Feb. 15, 1989
`
`Aug. 17, 1988
`
`Aug. 01, 1988
`
`Description
`
`Proceeding Number
`
`TEAS SECTION 7 REQUEST RECEIVED
`
`CASE ASSIGNED TO POST REGISTRATION PARALEGAL
`
`REGISTERED AND RENEWED (SECOND RENEWAL - 10 YRS)
`
`REGISTERED - SEC. 8 (10-YR) ACCEPTED/SEC. 9 GRANTED
`
`68335
`
`68335
`
`68335
`
`TEAS SECTION 8 & 9 RECEIVED
`
`TEAS SECTION 7 REQUEST RECEIVED
`
`CASE FILE IN TICRS
`
`REGISTERED AND RENEWED (FIRST RENEWAL - 10 YRS)
`
`REGISTERED - SEC. 9 GRANTED/CHECK RECORD FOR SEC. 8
`
`REGISTERED - PARTIAL SEC. 8 (10-YR) ACCEPTED
`
`NEW CERTIFICATE ISSUED, SEC. 7D
`
`REGISTERED - COMBINED SECTION 8 (10-YR) & SEC. 9 FILED
`
`REGISTERED - SEC. 8 (6-YR) ACCEPTED & SEC. 15 ACK.
`
`RESPONSE RECEIVED TO POST REG. ACTION
`
`POST REGISTRATION ACTION MAILED - SEC. 8 & 15
`
`REGISTERED - SEC. 8 (6-YR) & SEC. 15 FILED
`
`REGISTERED-PRINCIPAL REGISTER
`
`PUBLISHED FOR OPPOSITION
`
`NOTICE OF PUBLICATION
`
`APPROVED FOR PUB - PRINCIPAL REGISTER
`
`CORRESPONDENCE RECEIVED IN LAW OFFICE
`
`NON-FINAL ACTION MAILED
`
`CORRESPONDENCE RECEIVED IN LAW OFFICE
`
`LETTER OF SUSPENSION MAILED
`
`EXAMINER'S AMENDMENT MAILED
`
`UNRESPONSIVE/DUPLICATE PAPER RECEIVED
`
`NON-FINAL ACTION MAILED
`
`CORRESPONDENCE RECEIVED IN LAW OFFICE
`
`NON-FINAL ACTION MAILED
`
`CORRESPONDENCE RECEIVED IN LAW OFFICE
`
`NON-FINAL ACTION MAILED
`
`ASSIGNED TO EXAMINER
`
`ASSIGNED TO EXAMINER
`
`ASSIGNED TO EXAMINER
`
`NON-FINAL ACTION MAILED
`
`ASSIGNED TO EXAMINER
`
`66593
`
`66563
`
`66563
`
`66593
`
`Maintenance Filings or Post Registration Information
`
`Affidavit of Continued Use: Section 8 - Accepted
`
`Affidavit of Incontestability: Section 15 - Accepted
`
`Renewal Filed: Yes
`
`Renewal Date: Jun. 09, 2012
`
`Change in Registration: Yes
`
`Correction made to
`
`In the statement, Column 1, line 11, "PANDANTS" should be deleted, and PENDANTS should be inserted. In the statement, Column 2, line 4,
`
`Registration:
`
`"PLACQUES" should be deleted, and PLAQUES should be inserted.
`
`TM Staff and Location Information
`
`TM Staff Information - None
`
`3 of 4
`
`2/1/2017 2:30 PM
`
`

`

`Trademark Status & Document Retrieval
`
`http://tsdr.uspto.gov/#caseNumber=73732527&caseType=SERIAL_NO...
`
`File Location
`
`Current Location: GENERIC WEB UPDATE
`
`Date in Location: Sep. 27, 2011
`
`Assignment Abstract Of Title Information - None recorded
`
`Proceedings - None recorded
`
`4 of 4
`
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`
`

`

`
`
`EXHIBIT 2
`EXHIBIT 2
`
`

`

`Trademark Status & Document Retrieval
`
`http://tsdr.uspto.gov/#caseNumber=85424619&caseType=SERIAL_NO...
`
`The Trademark organization is beta testing a next generation examination system. As a result, there may be instances where Office actions have unexpected
`formatting or spacing issues. The Office is working on improvements to resolve these issues and appreciates your patience. Please contact us at TMFeedback
`if you have comments or issues with the appearance of a particular Office action or its attachments.
`
`STATUS
`
`DOCUMENTS
`
`Back to Search
`
`Print
`
`Generated on: This page was generated by TSDR on 2017-02-01 17:31:00 EST
`
`Mark: CIF
`
`US Serial Number: 85424619
`
`Application Filing Date: Sep. 16, 2011
`
`US Registration Number: 4174419
`
`Registration Date: Jul. 17, 2012
`
`Register: Principal
`
`Mark Type: Service Mark
`
`TM5 Common Status
`
`Descriptor:
`
`LIVE/REGISTRATION/Issued and Active
`
`The trademark application has been registered with the Office.
`
`Status: Registered. The registration date is used to determine when post-registration maintenance documents are due.
`
`Status Date: Jul. 17, 2012
`
`Publication Date: May 01, 2012
`
`Mark Information
`
`Mark Literal Elements: CIF
`
`Standard Character Claim: No
`
`Mark Drawing Type: 5 - AN ILLUSTRATION DRAWING WITH WORD(S) /LETTER(S)/ NUMBER(S) INSTYLIZED FORM
`
`Description of Mark: The mark consists of the stylized wording "CIF".
`
`Color(s) Claimed: Color is not claimed as a feature of the mark.
`
`Related Properties Information
`
`Claimed Ownership of US
`
`1691152
`
`Registrations:
`
`Goods and Services
`
`Note:
`
`The following symbols indicate that the registrant/owner has amended the goods/services:
`
`Brackets [..] indicate deleted goods/services;
`
`Double parenthesis ((..)) identify any goods/services not claimed in a Section 15 affidavit of incontestability; and
`
`Asterisks *..* identify additional (new) wording in the goods/services.
`
`For: Encouraging participation in high school sports competitions and events by establishing rules and providing governance for the competitions and
`
`events; providing a website featuring information relating to high school sports; and providing on-line newsletters in the field of high school sports
`
`International Class(es): 041 - Primary Class
`
`U.S Class(es): 100, 101, 107
`
`Class Status: ACTIVE
`
`Basis: 1(a)
`
`First Use: 1950
`
`Basis Information (Case Level)
`
`Use in Commerce: 1950
`
`Filed Use: Yes
`
`Currently Use: Yes
`
`Amended Use: No
`
`1 of 3
`
`2/1/2017 2:31 PM
`
`

`

`Trademark Status & Document Retrieval
`
`http://tsdr.uspto.gov/#caseNumber=85424619&caseType=SERIAL_NO...
`
`Filed ITU: No
`
`Filed 44D: No
`
`Filed 44E: No
`
`Filed 66A: No
`
`Currently ITU: No
`
`Currently 44D: No
`
`Currently 44E: No
`
`Currently 66A: No
`
`Filed No Basis: No
`
`Currently No Basis: No
`
`Current Owner(s) Information
`
`Owner Name: California Interscholastic Federation
`
`Owner Address: 4658 Duckhorn Drive
`
`Sacramento, CALIFORNIA UNITED STATES 95834
`
`Amended ITU: No
`
`Amended 44D: No
`
`Amended 44E: No
`
`Legal Entity Type: non-profit organization
`
`State or Country Where
`
`CALIFORNIA
`
`Organized:
`
`Attorney/Correspondence Information
`
`Attorney of Record
`
`Attorney Name: Lori Lee Yamato
`
`Docket Number: CIFCA.003T
`
`Attorney Primary Email
`
`efiling@kmob.com
`
`Attorney Email Authorized: No
`
`Address:
`
`Correspondent
`
`Correspondent
`
`LORI LEE YAMATO
`
`Name/Address:
`
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`
`2040 MAIN ST FL 14
`
`IRVINE, CALIFORNIA UNITED STATES 92614-8214
`
`Phone:
`
`(949) 760-0404
`
`Fax:
`
`(949) 760-9502
`
`Correspondent e-mail: efiling@kmob.com
`
`Correspondent e-mail
`
`Yes
`
`Authorized:
`
`Domestic Representative - Not Found
`
`Prosecution History
`
`Date
`
`Jul. 17, 2012
`
`Description
`
`Proceeding Number
`
`REGISTERED-PRINCIPAL REGISTER
`
`May 01, 2012
`
`May 01, 2012
`
`Apr. 11, 2012
`
`Mar. 28, 2012
`
`Mar. 27, 2012
`
`Mar. 09, 2012
`
`Feb. 21, 2012
`
`Feb. 21, 2012
`
`Feb. 21, 2012
`
`Feb. 21, 2012
`
`Jan. 11, 2012
`
`Jan. 11, 2012
`
`Jan. 11, 2012
`
`Jan. 11, 2012
`
`Jan. 04, 2012
`
`Sep. 21, 2011
`
`Sep. 20, 2011
`
`Sep. 20, 2011
`
`OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED
`
`PUBLISHED FOR OPPOSITION
`
`NOTIFICATION OF NOTICE OF PUBLICATION E-MAILED
`
`LAW OFFICE PUBLICATION REVIEW COMPLETED
`
`ASSIGNED TO LIE
`
`APPROVED FOR PUB - PRINCIPAL REGISTER
`
`EXAMINER'S AMENDMENT ENTERED
`
`NOTIFICATION OF EXAMINERS AMENDMENT E-MAILED
`
`EXAMINERS AMENDMENT E-MAILED
`
`EXAMINERS AMENDMENT -WRITTEN
`
`68552
`
`68552
`
`88888
`
`6328
`
`6328
`
`78428
`
`NOTIFICATION OF EXAMINER'S AMENDMENT/PRIORITY ACTION
`
`6326
`
`E-MAILED
`
`EXAMINER'S AMENDMENT/PRIORITY ACTION E-MAILED
`
`COMBINED EXAMINER'S AMENDMENT/PRIORITY ACTION
`
`6326
`
`78428
`
`AUTOMATIC ENTRY
`
`EXAMINERS AMENDMENT AND/OR PRIORITY ACTION -
`
`78428
`
`COMPLETED
`
`ASSIGNED TO EXAMINER
`
`78428
`
`NOTICE OF PSEUDO MARK MAILED
`
`NEW APPLICATION OFFICE SUPPLIED DATA ENTERED IN TRAM
`
`NEW APPLICATION ENTERED IN TRAM
`
`2 of 3
`
`2/1/2017 2:31 PM
`
`

`

`Trademark Status & Document Retrieval
`
`http://tsdr.uspto.gov/#caseNumber=85424619&caseType=SERIAL_NO...
`
`TM Staff and Location Information
`
`TM Staff Information - None
`
`File Location
`
`Current Location: PUBLICATION AND ISSUE SECTION
`
`Date in Location: Jul. 17, 2012
`
`Assignment Abstract Of Title Information - None recorded
`
`Proceedings - None recorded
`
`3 of 3
`
`2/1/2017 2:31 PM
`
`

`

`
`
`EXHIBIT 3
`EXHIBIT 3
`
`
`
`

`

`Trademark Status & Document Retrieval
`
`http://tsdr.uspto.gov/#caseNumber=86182631&caseType=SERIAL_NO...
`
`The Trademark organization is beta testing a next generation examination system. As a result, there may be instances where Office actions have unexpected
`formatting or spacing issues. The Office is working on improvements to resolve these issues and appreciates your patience. Please contact us at TMFeedback
`if you have comments or issues with the appearance of a particular Office action or its attachments.
`
`STATUS
`
`DOCUMENTS
`
`Back to Search
`
`Print
`
`Generated on: This page was generated by TSDR on 2017-02-01 17:32:11 EST
`
`Mark: CIF
`
`US Serial Number: 86182631
`
`Application Filing Date: Feb. 03, 2014
`
`US Registration Number: 4822958
`
`Registration Date: Sep. 29, 2015
`
`Register: Principal
`
`Mark Type: Trademark, Service Mark
`
`TM5 Common Status
`
`Descriptor:
`
`LIVE/REGISTRATION/Issued and Active
`
`The trademark application has been registered with the Office.
`
`Status: Registered. The registration date is used to determine when post-registration maintenance documents are due.
`
`Status Date: Sep. 29, 2015
`
`Publication Date: Dec. 30, 2014
`
`Notice of Allowance Date: Feb. 24, 2015
`
`Mark Information
`
`Mark Literal Elements: CIF
`
`Standard Character Claim: Yes. The mark consist