Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA813181
`04/12/2017
`
`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
`
`University of Richmond
`
`Granted to Date
`of previous ex-
`tension
`
`Address
`
`Attorney informa-
`tion
`
`04/15/2017
`
`202 Maryland HallUniversity of Richmond
`Richmond, VA 23173
`UNITED STATES
`
`Andriana S. Daly
`McGuireWoods LLP
`800 East Canal Street
`Richmond, VA 23219
`UNITED STATES
`adaly@mcguirewoods.com, trademarks@mcguirewoods.com
`
`Applicant Information
`
`Application No
`
`87177084
`
`Publication date
`
`02/14/2017
`
`Opposition Filing
`Date
`
`Applicant
`
`04/12/2017
`
`Opposition Peri-
`od Ends
`
`04/15/2017
`
`Spiderfit, Inc.
`10646 Ranch View Drive
`San Diego, CA 92131
`UNITED STATES
`
`Goods/Services Affected by Opposition
`
`Class 041. First Use: 2013/05/31 First Use In Commerce: 2013/05/31
`All goods and services in the class are opposed, namely: Education services, namely, providing on-
`line courses in the field of training educators in the nature of youth physical development; Education
`services, namely, training educators in the field of youth physical development and providing curricula
`in connection therewith; Educational services, namely, providing training of educators for certification
`in thefield of youth physical development; Production and distribution of videos in the field of training
`and certifying educators in the nature of youth physical development; Providing education courses in
`the field of youth physical development offered through online, non-downloadable videos and in-
`structor assistance; Providing information relating to educationservices for children
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`Mark Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`
`2917573
`
`Application Date
`
`02/05/2004
`
`

`

`Registration Date
`
`01/11/2005
`
`Word Mark
`
`Design Mark
`
`SPIDERS
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`Related Proceed-
`ings
`
`Attachments
`
`NONE
`
`Class 041. First use: First Use: 1897/05/31 First Use In Commerce: 1897/05/31
`Entertainment services, namely conducting athletic events
`
`In re Application Serial No. 87/177,075
`
`78362905#TMSN.png( bytes )
`Notice of Opposition - SPIDERFIT w EXHIBITS.pdf(970553 bytes )
`
`Signature
`
`/Andriana S. Daly/
`
`Name
`
`Date
`
`Andriana S. Daly
`
`04/12/2017
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`In re Application of:
`
`Spiderfit, Inc.
`
`Serial No.:
`
`87/177,084
`
`Filed:
`
`Mark:
`
`Published:
`
`
`
`
`
`
`The University of Richmond,
`
`Opposer,
`
`v.
`
`
`
`
`
`Spiderfit, Inc.,
`
`Applicant.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`September 20, 2016
`
`SPIDERFIT
`
`February 14, 2017
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`)
`)
`)
`)
`) Opposition No.
`)
`)
`)
`)
`
`NOTICE OF OPPOSITION
`
`1.
`
`Spiderfit, Inc. (“Spiderfit”) is a California Corporation doing business at 10646
`
`
`
`
`
`Ranch View Drive, San Diego, California 92131.
`
`2.
`
`Spiderfit seeks to register the word mark SPIDERFIT (the “SPIDERFIT Mark”)
`
`in International Class 41 for education services relating to youth physical development. See U.S.
`
`Trademark Application Serial No. 87/177,084 (the “Application”).
`
`3.
`
`The University of Richmond (the “University”) is a Virginia corporation with its
`
`principal place of business at 28 Westhampton Way, Maryland Hall, Suite 200, University of
`
`Richmond, Virginia 23173.
`
`4.
`
`The University would be damaged by registration of the SPIDERFIT Mark, and
`
`therefore opposes registration under 15 U.S.C. § 1063.
`
`

`

`5.
`
`Pursuant to Trademark Rule 2.102, the University obtained an extension of time
`
`for filing a Notice of Opposition against registration of the SPIDERFIT Mark up to and
`
`including April 15, 2017. 1
`
`The University and its SPIDERS Marks
`
`6.
`
`The University is a nationally-ranked private liberal arts university in Richmond,
`
`Virginia, which was established in 1830.
`
`7.
`
`The University’s academic programs have garnered acclaim from the Princeton
`
`Review, Newsweek, The Fiske Guide to Colleges, Forbes, and Bloomberg BusinessWeek, among
`
`other publications. Indeed, U.S. News & World Report has ranked the University number 25
`
`among the nation’s Best Liberal Arts Colleges.
`
`8.
`
`In addition to its many academic programs, the University offers a variety of
`
`educational and instructional courses and programs in the field of fitness and wellness. For
`
`example and without limitation, the University offers day camps for children that are directed
`
`toward, among other things, developing knowledge and leadership skills, introducing children to
`
`healthy behaviors and recreational activities, and promoting an active lifestyle; lessons in sports
`
`and games such as golf and stand up paddleboarding; personal training courses and
`
`certifications; mediation and stress management courses; classes in nutrition and other aspects of
`
`healthy aging; and classes in activities such as pilates, yoga, tai chi, and swimming
`
`9.
`
`The University also offers 17 varsity sports at the Division I level, 32 sport clubs,
`
`and a host of intramural athletics and recreational programs.
`
`10.
`
`The University’s Division I athletics programs have received national media
`
`attention.
`
`
`1 The University’s April 15, 2017 deadline to oppose the SPIDERFIT Mark extends to the next business day, April
`17, 2017, under Trademark Rules 2.116 and 2.196.
`
`
`
`2
`
`

`

`11.
`
`Since 1897, the University has used a spider mascot for its sports teams.
`
`12.
`
`As of the filing of this Notice of Opposition, the University is the only college or
`
`university in the United States that uses a spider mascot for its sports teams.
`
`13.
`
`For over 115 years, the University has used the trademark and service mark
`
`SPIDERS (the “SPIDERS Mark”) continuously in interstate commerce for goods and services
`
`related to education and athletics.
`
`14.
`
`The University has obtained several federal trademark registrations to protect its
`
`longstanding rights in the SPIDERS Mark. For example, the SPIDERS Mark is registered in
`
`International Class 41 for “[e]ntertainment services, namely conducting athletic events.” Ex. A,
`
`U.S. Registration No. 2,917,573. The SPIDERS Mark also is registered in International Classes
`
`16 for a decals, stationary, and the like, and in International Class 25 for a variety of apparel
`
`items. See U.S. Registration Nos. 2,947,873 & 2,917,574.
`
`15.
`
`In addition to the SPIDERS Mark, the University has used the following spider
`
`design mark (the “UR Spider Design Mark”) continuously in interstate commerce for nearly 20
`
`years:
`
`See U.S. Registration No. 2,665,931.
`
`
`
`16.
`
`The University has obtained a federal trademark registration to protect its rights in
`
`the UR Spider Design Mark. See U.S. Registration No. 2,665,931. The UR Spider Design Mark
`
`is registered in International Class 41 for “[e]ntertainment services, namely, conducting
`
`
`
`3
`
`

`

`university level athletic events, but not including ice hockey,” and also is registered in
`
`International Class 16. Id.
`
`17.
`
`The University’s use of the SPIDERS Mark predates Spiderfit’s alleged date of
`
`first use of the SPIDERFIT Mark and predates the filing of Spiderfit’s Application.
`
`18.
`
`The University has expended considerable time, money, and effort in the
`
`development, preparation, advertising, and promotion of goods and services under the SPIDERS
`
`Mark.
`
`19.
`
`The SPIDERS Mark is an integral part of the University’s business and brand
`
`identity.
`
`20.
`
`The University’s federal trademark registrations for the SPIDERS Mark are
`
`incontestable.
`
`21.
`
`By virtue of the University’s long, exclusive, and continuous use of the distinctive
`
`SPIDERS Mark, the University’s services have become well and favorably known to the general
`
`consuming public. Thus, the SPIDERS Mark has come to represent a valuable symbol of the
`
`University’s goodwill.
`
`Spiderfit and the SPIDERFIT Mark
`
`22.
`
`Spiderfit claims in the Application to have started using the SPIDERFIT Mark on
`
`or about May 31, 2013.
`
`23.
`
`Spiderfit seeks to register the SPIDERFIT Mark in International Class 41 for the
`
`following goods and services:
`
`Education services, namely, providing on-line courses in the field of training
`educators in the nature of youth physical development; Education services,
`namely, training educators in the field of youth physical development and
`providing curricula in connection therewith; Educational services, namely,
`providing training of educators for certification in the field of youth physical
`development; Production and distribution of videos in the field of training and
`
`
`
`4
`
`

`

`certifying educators in the nature of youth physical development; Providing
`education courses in the field of youth physical development offered through
`online, non-downloadable videos and instructor assistance; Providing information
`relating to education services for children.
`
`
`
`24.
`
`Accordingly, Spiderfit purportedly is using the SPIDERFIT Mark in connection
`
`with services that overlap with, or at a minimum, are substantially related to, goods and services
`
`that currently are offered by the University under the SPIDERS Mark, and/or are in the
`
`University’s zone of natural expansion for use of the SPIDERS Mark.
`
`25.
`
`26.
`
`The SPIDERFIT Mark is substantially similar to the SPIDERS Mark.
`
`Indeed, on its website, http://www.spiderfitkids.com (the “Spiderfit Website”),
`
`Spiderfit has emphasized the “SPIDER” portion of the SPIDERFIT Mark by using capitalized
`
`letters for “SPIDER,” and lowercase letters for “fit.” See Ex. B, Captures of the Spiderfit
`
`Website (showing mark as “SPIDERfit”).
`
`27.
`
`In addition, in promotional materials, including the Spiderfit Website, Spiderfit
`
`has used a spider design mark. See id.
`
`28.
`
`There is no issue as to priority, as the University has used the incontestable
`
`SPIDERS Mark continuously in interstate commerce for over 115 years, and the SPIDERFIT
`
`Mark allegedly was first used in May 2013.
`
`FIRST GROUND FOR OPPOSITION
`Likelihood of Confusion
`
`
`
`29.
`
`Paragraphs 1 through 28 are incorporated by reference as if fully set forth herein,
`
`and made a part of this Ground for Opposition.
`
`30.
`
`The SPIDERS Mark and the SPIDERFIT Mark are substantially similar in sight,
`
`sound, and meaning.
`
`
`
`5
`
`

`

`31.
`
`In addition, just as the University has used the UR Spider Design Mark in
`
`conjunction with the SPIDERS Mark, Spiderfit has used a spider design logo in connection with
`
`the SPIDERFIT Mark. See Ex. B.
`
`32.
`
`The services for which Spiderfit seeks to register the SPIDERFIT Mark overlap
`
`with, or are substantially related to, goods and services currently offered by the University under
`
`the SPIDERS Mark, and/or are within the University’s zone of natural expansion for use of the
`
`SPIDERS Mark.
`
`33.
`
`Because of the similarity between the SPIDERFIT Mark and the SPIDERS Mark,
`
`and between the parties’ services, consumers and the general public are likely to be confused,
`
`mistaken, or deceived as to the origin, sponsorship, or affiliation of Spiderfit’s services, and are
`
`likely to be misled into believing that Spiderfit’s services offered under the SPIDERFIT Mark
`
`are offered, sponsored, or endorsed by, or otherwise affiliated with, the University, to the
`
`damage of the University and its reputation.
`
`34.
`
`The University has no control over the nature or quality of Spiderfit’s services. In
`
`the event of false association, any defects, objections, or faults found with Spiderfit’s services
`
`could inflict serious injury upon the University and its reputation.
`
`WHEREFORE, the University prays that the Application be rejected, that no registration
`
`thereon be issued to Spiderfit, and that this Opposition be sustained.
`
`
`
`6
`
`

`

`Respectfully submitted,
`
`The University of Richmond.
`
`By Counsel
`
`
`
`/Andriana S. Daly/
`Andriana S. Daly
`McGuireWoods LLP
`Gateway Plaza
`800 East Canal Street
`Richmond, VA 23219
`Telephone: (804) 775-7512
`Fax: (804) 440-7727
`adaly@mcguirewoods.com
`
`Counsel for Opposer
`
`
`
`
`
`
`
`
`
`
`
`
`Dated: April 12, 2017
`
`
`
`
`
`
`
`
`
`
`Electronically Filed via ESTTA: April 12, 2017
`
`
`
`
`7
`
`

`

`CERTIFICATE OF SERVICE
`
`I certify that on April 12, 2017, a copy of this Notice of Opposition was mailed, first
`class, postage prepaid to:
`
`Spiderfit, Inc.
`10646 Ranch View Drive
`San Diego, CA 92131
`
`
`with a copy to
`
`James P. Broder
`ROEDER & BRODER LLP
`9915 Mira Mesa Blvd., Suite 300
`San Diego, CA 92131
`jbroder@rbiplaw.com
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`/Andriana S. Daly/
`Andriana S. Daly
`
`
`
`8
`
`

`

`
`
`EXHIBIT A
`EXHIBIT A
`
`
`
`
`

`

`Int. CL: 41
`
`Prior U.S. Cls.: 100, 101 and 107
`
`United States Patent and Trademark Office
`
`Reg. No. 2,917,573
`Registered Jan. 11, 2005
`
`SERVICE MARK
`PRINCIPAL REGISTER
`
`SPIDERS
`
`UNIVERSITY OF RICHMOND (VIRGINIA COR-
`PORATION)
`MARYLAND HALL, ROOM 202A
`UNIVERSITY OF RICHMOND, VA 23173
`
`MARGERY A. TIERNEY, EXAMINING ATTORNEY
`
`THE MARK CONSISTS OF STANDARD CHAR-
`ACTERS WITHOUT CLAIM TO ANY PARTICULAR
`FONT, STYLE, SIZE, OR COLOR.
`
`OWNER OF US. REG. NOS. 2,665,931, 2,676,942
`AND OTHERS.
`
`SER. NO. 78-362,905, FILED 2-5-2004.
`
`FOR: ENTERTAINMENT SERVICES, NAMELY
`CONDUCTING ATHLETIC EVENTS, IN CLASS 41
`(US. CLS. 100, 101 AND 107).
`
`FIRST USE 5-31-1897; IN COMMERCE 5-31-1897.
`
`

`

`
`
`EXHIBIT B
`EXHIBIT B
`
`
`
`
`

`

`Select Page
`
`a
`
`7 Days of Play
`
`by Craig Valency | Coaching & Teaching, Play & Development, Warm Ups & Circuits
`
`read more
`
`http://spiderfitkids.com/
`
`4/12/2017
`
`

`

`Select Page
`
`a
`
`New to the SPIDERfit Kids Tribe?
`Start here!
`
`About SPIDERfit Kids
`
`Welcome to the Tribe!
`
`At SPIDERfit Kids, we believe that personal trainers, teachers, parents, coaches and therapists all
`
`have a tremendous opportunity to inspire children to a life of fitness and physical literacy with
`the power of play.  Our online resources are designed to give you the research, knowledge, and
`
`activities to make youth fitness programs fun and effective for ALL children.
`
`The SPIDERfit mission is to provide you with the tools and the framework to once again make
`“productive play” part of children’s lives.  With the knowledge of how to utilize fun, play-based
`
`activities to develop foundational movement skills, you can inspire children of all age and fitness
`
`levels to be active for life.
`
`Our goal is to cast a wide net with diverse youth fitness resources and ensure that no child feels
`
`alienated or left out. Fun, engaging activities and games are designed to create a play-based
`
`environment to build the foundations necessary for true physical literacy as well as improve
`
`cognitive and behavioral outcomes. At SPIDERfit Kids we want kids to move better so they want
`
`to move more for a lifetime!
`
`We are fitness professionals and dads, who are passionate about sharing the activities, program
`
`strategies, and research that will help you make an impact on the health of our kids.
`
`http://spiderfitkids.com/start-here/
`
`4/12/2017
`
`

`

`We believe that collaboration empowers our cause, so we welcome parents, coaches, therapists,
`
`teachers, and anyone else looking to make a difference as part of the SPIDERfit tribe!
`
`About Brett and Craig
`
`Brett Klika and Craig Valency are certified strength and conditioning specialists who have been working with
`
`children in community programs, schools, and the fitness industry for a combined 30 years. Both Brett and
`
`Craig are published authors and international presenters in the fitness industry. Brett graduated from Oregon
`
`State University and holds a variety of certifications in the fitness field. Craig has a bachelor degree from
`
`UCLA and master of arts degree in Kinesiology from San Diego State University.
`
`Learn more about Brett and Craig here!
`
`For daily youth fitness and physical literacy tips, make sure you follow (and like!) SPIDERfit Kids
`
`on Facebook here!
`
`Every Monday, we send free information and other resources to the SPIDERfit Kids Tribe.  Sign
`
`up here and we’ll include you in the movement!
`
`Finally, the SPIDERfit YouTube channel is where you’ll h a ve a cce ss to to n s o f a rch ive d vid e o
`resources with fun and effective games and activities.  Subscribe to the SPIDERfit Kids YouTube
`
`channel here!
`
`http://spiderfitkids.com/start-here/
`
`4/12/2017
`
`

`

`We’re honored to have you as part of the movement to get kids moving!
`
`Let’s Take a Tour!
`
`Learn
`
`Here is where you’ll find blogs, videos, and other resources to not only expand your knowledge and know-how,
`
`but also to share with your community!
`
`The health and well-being of our youth is in peril, and we need your help to spread the word of change.
`
`(cid:149) Play and Development: Enjoy blogs, videos and other resources sharing research and
`
`practical tips on how both guided and unguided sensory-based play can be effective for
`
`physical, social, and cognitive development.Click here for our most popular blog on the 9 key
`
`developmental skills that form the foundation of physical and cognitive performance.
`
`(cid:149) Play and Physical Fitness: Discover strategies on how to use play during class time, personal
`
`training sessions, sports practices, and more to improve fitness and physical performance for
`
`all ages and ability levels.Click here for one of our most popular blog posts on how targeted
`
`activities can be used to develop timing and agility for games and other activities.
`
`(cid:149) Teaching/Coaching Best Practices: Inspiring children to become confident and competent
`with physical activity for life is as much of an art as it is a science.  In this section, we share the
`
`“tricks of the trade” that have helped us and other professionals to not only inspire kids, but
`
`to grow successful and profitable youth fitness programs.Discover how to:
`
`(cid:149) “Build” skills for different fitness levels
`
`(cid:149) Manage large groups
`
`(cid:149) Create an effective program framework
`
`(cid:149) Adapt activities for various fitness levels
`
`(cid:149) Properly “cue” movement to maximize results & reduce frustration
`
`…and much more!
`
`Click here for our most popular YouTube video on how kids coaching each other can speed
`
`up learning.
`
`Powerful Play Activities
`
`Here you’ll have access to blog posts and videos with instructions and demonstrations for some of our favorite
`
`youth fitness and physical literacy games and activities. These are divided and indexed into categories that
`
`make them easy to use immediately with the kids you work with!
`
`(cid:149) Play-based warm ups and circuits
`
`(cid:149) Coaching and teaching best practices
`
`http://spiderfitkids.com/start-here/
`
`4/12/2017
`
`

`

`(cid:149) Classroom movement break activities
`
`(cid:149) Quick grouping activities
`
`(cid:149) Perceptual motor (Sensory Awareness) skills activities: Body, directional, spatial, temporal,
`
`auditory, vestibular, visual, proprioceptive, and tactile
`
`(cid:149) Activities for large and small groups
`
`Click here to see one of our most popular “spatial awareness” activities for grade school kids.
`
`The Store
`
`SPIDERfit kids is working to constantly create, update, and acquire valuable resources to help you on your
`
`mission to inspire kids to fitness. In this section of the site, you’ll have the opportunity to take home courses,
`
`eBooks, guides, and other powerful youth fitness tools at a great value.
`
`Be sure to check out SPIDERfit’s m o st re ce n t co u rse : Powerful Play: The Ultimate Guide to the
`
`Foundations of Youth Fitness and Physical Literacy here!
`
`Connect
`Now that you know us, we want to get to know you better!  Connect with us here or send us an
`email at brett@spiderfitkids.com or craig@spiderfitkids.com. For videos, articles, and other
`resources, please follow us on Facebook and subscribe to our channel on YouTube. Let us know
`
`who you are and how we can help you inspire kids to lifelong fitness and physical literacy!
`
`Search This Site
`
`Search
`
`http://spiderfitkids.com/start-here/
`
`4/12/2017
`
`

`

`Connect with SPIDERfit!
`
`http://spiderfitkids.com/start-here/
`
`4/12/2017
`
`

`

` 
`
`http://spiderfitkids.com/start-here/
`
`4/12/2017
`
`