Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA1113754
`02/11/2021
`
`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
`
`Granted to Date
`of previous ex-
`tension
`
`Address
`
`Attorney informa-
`tion
`
`Vans, Inc.
`
`02/13/2021
`
`1588 SOUTH COAST DRIVE
`COSTA MESA, CA 92626
`UNITED STATES
`
`MICHAEL R RIZZO
`SAUNDERS & SILVERSTEIN LLP
`14 CEDAR STREET
`SUITE 224
`AMESBURY, MA 01913
`UNITED STATES
`Primary Email: trademark@sandsip.com
`Secondary Email(s): mrizzo@sandsip.com
`No phone number provided.
`
`Docket Number
`
`990.889.11
`
`Applicant Information
`
`Application No.
`
`88903225
`
`Publication date
`
`12/15/2020
`
`Opposition Filing
`Date
`
`Applicant
`
`02/11/2021
`
`Opposition Peri-
`od Ends
`
`02/13/2021
`
`SUZHOU WAN SHI WEI TRADING LIMITED CO.
`BLG4-603, CAIZHI PLAZA, CHANGQIAO JIEDAO
`SUZHOU, JIANGSU, 215128
`CHINA
`
`Goods/Services Affected by Opposition
`
`Class 028. First Use: 2020/05/01 First Use In Commerce: 2020/05/01
`All goods and services in the class are opposed, namely: Balls for sports; Body-building apparatus;
`Body-training apparatus; Chest expanders; Dumb-bells; Fitness equipment, namely, a weighted bar
`to improve posture and overall fitness; Fitness equipment, namely, straps used for yoga and other fit-
`ness activities and for carrying a yogamat; Fitness machines and equipment, namely, weights, tread-
`mills, rowing machines, stair stepping machines, resistance machines, stationary cycles; Hang
`gliders; Stationary exercise bicycles; Stationary exercise bicycles and rollers therefor; Wrist and ankle
`weights for exercise; Ankle and wrist weights for exercise; Exercise wrist weights; Exercise equip-
`ment, namely, chest pulls; Rollers for stationary exercise bicycles
`
`Grounds for Opposition
`
`

`

`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`Dilution by blurring
`
`Trademark Act Sections 2 and 43(c)
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`
`1861013
`
`Registration Date
`
`11/01/1994
`
`Application Date
`
`11/16/1993
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`VANS
`
`NONE
`
`Class 025. First use: First Use: 1967/02/00 First Use In Commerce: 1969/00/00
`clothing and footwear; namely, sport shirts, T-shirts, hats, shorts, jogging suits,
`socks and shoes for men, women and children
`
`U.S. Registration
`No.
`
`1267262
`
`Registration Date
`
`02/14/1984
`
`Application Date
`
`09/30/1982
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`VANS
`
`NONE
`
`Class 025. First use: First Use: 1967/02/00 First Use In Commerce: 1969/00/00
`Shoes
`
`U.S. Registration
`No.
`
`1269201
`
`Registration Date
`
`03/06/1984
`
`Application Date
`
`09/30/1982
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`VANS
`
`NONE
`
`Class 018. First use: First Use: 1981/12/31 First Use In Commerce: 1982/01/00
`Handbags and All Purpose Tote Bags
`
`U.S. Registration
`No.
`
`1269202
`
`Registration Date
`
`03/06/1984
`
`Application Date
`
`09/30/1982
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`VANS
`
`NONE
`
`Class 018. First use: First Use: 1981/04/17 First Use In Commerce: 1982/02/00
`Wallets
`
`

`

`U.S. Registration
`No.
`
`4347943
`
`Registration Date
`
`06/04/2013
`
`Application Date
`
`05/01/2012
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`VANS
`
`NONE
`
`Class 028. First use: First Use: 2012/05/01 First Use In Commerce: 2012/05/01
`Skateboard decks
`
`U.S. Registration
`No.
`
`5482534
`
`Registration Date
`
`05/29/2018
`
`Application Date
`
`06/16/2017
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`VANS
`
`NONE
`
`Class 001. First use: First Use: 1998/02/00 First Use In Commerce: 1998/02/00
`Waterproofing chemical compositions; stain repellants
`Class 003. First use: First Use: 2007/11/00 First Use In Commerce: 2007/11/00
`Wipes impregnated with cleaning preparations and stain removing preparations;
`Scented fabric refresher spray; cleaning preparations for footwear; Shoe clean-
`ingapplicators containing shoe cleaning preparations
`Class 005. First use: First Use: 2001/00/00 First Use In Commerce: 2001/00/00
`Deodorants for clothing or textiles; Shoe and clothing deodorizers; Shoe De-
`odorizer
`
`U.S. Registration
`No.
`
`5416616
`
`Registration Date
`
`03/06/2018
`
`Application Date
`
`07/25/2017
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`VANS
`
`NONE
`
`Class 026. First use: First Use: 1966/00/00 First Use In Commerce: 1966/00/00
`Laces for footwear; fasteners for shoesand boots; leather shoe laces
`
`U.S. Registration
`No.
`
`3862678
`
`Registration Date
`
`10/19/2010
`
`Application Date
`
`08/12/2009
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`VANS
`
`NONE
`
`Class 041. First use: First Use: 2009/01/01 First Use In Commerce: 2009/01/01
`Entertainment services in the nature ofproviding temporary use of non-
`
`

`

`downloadable video games provided to subscribers[ by means of cable televi-
`sion and ] via the internet
`
`U.S. Registration
`No.
`
`3742510
`
`Registration Date
`
`01/26/2010
`
`Application Date
`
`08/12/2009
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`VANS
`
`NONE
`
`Class 009. First use: First Use: 1995/07/01 First Use In Commerce: 1995/07/01
`sound recordings [ and pre-recorded videotapes and videodiscs ] featuring a
`compilation of musical performances of punkrock and related musical artists and
`group featured in connection with a skateboarding, extreme sports festival and
`tour
`Class 016. First use: First Use: 1995/07/01 First Use In Commerce: 1995/07/01
`souvenir merchandise related to a skateboarding, extreme sports, punk rock
`festival and tour, namely, posters, [ paper banners, ] stickers and souvenir pro-
`grams
`Class 025. First use: First Use: 1995/07/01 First Use In Commerce: 1995/07/01
`souvenir merchandise related to a skateboarding, extreme sports, punk rock
`festival and tour, namely, t-shirts, [ jackets, sweatshirts, thermal shirts, ] caps
`and hats
`Class 041. First use: First Use: 1995/07/01 First Use In Commerce: 1995/07/01
`organizing skateboarding, extreme sports, punk rock festivals, concerts and
`tours
`
`U.S. Registration
`No.
`
`2449454
`
`Registration Date
`
`05/08/2001
`
`Application Date
`
`09/26/1997
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`VANS
`
`NONE
`
`Class 014. First use: First Use: 2000/11/01 First Use In Commerce: 2000/11/01
`watches
`
`U.S. Registration
`No.
`
`1746195
`
`Registration Date
`
`01/12/1993
`
`Application Date
`
`01/22/1992
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`VANS
`
`NONE
`
`Class 042. First use: First Use: 1966/00/00 First Use In Commerce: 1966/00/00
`shoe store services
`
`U.S. Registration
`
`3824638
`
`Application Date
`
`12/14/2009
`
`

`

`No.
`
`Registration Date
`
`07/27/2010
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`VANS
`
`NONE
`
`Class 035. First use: First Use: 1977/06/01 First Use In Commerce: 1977/06/01
`On-line retail store services and in-store retail store services all featuring cloth-
`ing and footwear
`
`U.S. Registration
`No.
`
`3740055
`
`Registration Date
`
`01/19/2010
`
`Application Date
`
`08/12/2009
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`VANS
`
`NONE
`
`Class 041. First use: First Use: 1982/11/01 First Use In Commerce: 1982/11/01
`organizing skateboarding, surfing, bmx,extreme sports, music festivals, concerts
`and tours
`
`U.S. Registration
`No.
`
`1267100
`
`Registration Date
`
`02/14/1984
`
`Application Date
`
`10/12/1982
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`VANS
`
`NONE
`
`Class 014. First use: First Use: 1975/10/20 First Use In Commerce: 1981/11/00
`Jewelry
`
`U.S. Registration
`No.
`
`5946386
`
`Registration Date
`
`12/24/2019
`
`Application Date
`
`07/03/2019
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`VANS
`
`NONE
`
`Class 018. First use: First Use: 2019/04/05 First Use In Commerce: 2019/09/25
`Luggage
`
`U.S. Registration
`No.
`
`5921086
`
`Registration Date
`
`11/26/2019
`
`Word Mark
`
`VANS
`
`Application Date
`
`07/03/2019
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 028. First use: First Use: 2015/09/01 First Use In Commerce: 2015/09/01
`Traction pads for sports equipment boards, namely, snowboards
`
`U.S. Registration
`No.
`
`1861882
`
`Registration Date
`
`11/08/1994
`
`Application Date
`
`11/16/1993
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`VANS
`
`NONE
`
`Class 025. First use: First Use: 1967/02/00 First Use In Commerce: 1969/00/00
`clothing and footwear; namely, sport shirts, T-shirts, hats, shorts, jogging suits,
`socks and shoes for men, women and children
`
`U.S. Registration
`No.
`
`1353939
`
`Registration Date
`
`08/13/1985
`
`Application Date
`
`08/29/1983
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`VANS
`
`NONE
`
`Class 014. First use: First Use: 1975/10/20 First Use In Commerce: 1981/11/00
`JEWELRY
`Class 018. First use: First Use: 1981/04/17 First Use In Commerce: 1982/03/00
`WALLETS HANDBAGS AND ALL PURPOSE TOTEBAGS
`Class 025. First use: First Use: 1967/02/00 First Use In Commerce: 1969/00/00
`WEARING APPAREL, NAMELY, SPORT SHIRTS, T-SHIRTS, HATS, SHORT,
`JOGGING SUITS, SOCKS, SWIMSUITS AND SHOES
`Class 028. First use: First Use: 1981/07/01 First Use In Commerce: 1982/03/00
`[ FLYING TOY DISCS ]
`
`U.S. Registration
`No.
`
`3824639
`
`Registration Date
`
`07/27/2010
`
`Application Date
`
`12/14/2009
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`VANS
`
`The mark consists of the stylized word "Vans" with the letter "V" leg extendingall
`the way to the letter "S".
`
`Class 035. First use: First Use: 1977/06/01 First Use In Commerce: 1977/06/01
`on-line retail store services and in-store retail store services all featuring clothing
`and footwear
`
`U.S. Registration
`No.
`
`4241763
`
`Application Date
`
`03/30/2012
`
`

`

`Registration Date
`
`11/13/2012
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`VANS
`
`NONE
`
`Class 009. First use: First Use: 2007/09/11 First Use In Commerce: 2007/09/11
`Sunglasses[ and eye glass cases]
`
`U.S. Registration
`No.
`
`5946387
`
`Registration Date
`
`12/24/2019
`
`Application Date
`
`07/03/2019
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`VANS
`
`The mark consists of the stylized word "VANS".
`
`Class 018. First use: First Use: 2019/04/05 First Use In Commerce: 2019/09/25
`Luggage
`
`U.S. Registration
`No.
`
`4241760
`
`Registration Date
`
`11/13/2012
`
`Application Date
`
`03/30/2012
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`VANS
`
`NONE
`
`Class 041. First use: First Use: 1995/07/01 First Use In Commerce: 1995/07/01
`Organizing skateboarding, surfing, bmx,extreme sports, music festivals, con-
`certs and tours
`
`U.S. Registration
`No.
`
`2277833
`
`Registration Date
`
`09/14/1999
`
`Application Date
`
`06/19/1998
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`VANS
`
`NONE
`
`Class 025. First use: First Use: 1995/01/00 First Use In Commerce: 1995/01/00
`men's, women's and children's clothing,namely, [ sweaters, ] shirts, [ jackets,
`pants, ] t-shirts, [ shorts, turtlenecks, gloves, hats, beanies, vests, parkasand
`footwear ]
`
`U.S. Registration
`No.
`
`5891110
`
`Registration Date
`
`10/22/2019
`
`Word Mark
`
`VANS "OFF THE WALL"
`
`Application Date
`
`04/22/2019
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of a skateboard with the words "VANS "OFF THE WALL"" in-
`side.
`
`Class 025. First use: First Use: 1978/07/00 First Use In Commerce: 1978/07/00
`Belts; Footwear; Headwear; Shirts
`
`U.S. Registration
`No.
`
`4241761
`
`Registration Date
`
`11/13/2012
`
`Application Date
`
`03/30/2012
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`VANS "OFF THE WALL"
`
`The mark consists of a design of a skateboard with the words "VANS OFF THE
`WALL" inside.
`
`Class 018. First use: First Use: 2007/11/30 First Use In Commerce: 2007/11/30
`All-purpose carrying bags; [ Beach bags; Book bags; ] Carry-all bags; [ Messen-
`ger bags; Overnight bags; Travel Bags; ] School bags; Shoulder bags; Sling
`bags; [ Tote bags; Handbags; ] Multi-purpose purses; [ Purses; ] Backpacks; [
`wallets ]
`
`U.S. Registration
`No.
`
`4241757
`
`Registration Date
`
`11/13/2012
`
`Application Date
`
`03/30/2012
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`VANS "OFF THE WALL"
`
`The mark consists of a skateboard with the words "VANS OFF THE WALL".
`
`Class 041. First use: First Use: 1995/07/01 First Use In Commerce: 1995/07/01
`Organizing skateboarding, surfing, bmx,extreme sports competitions, music fest-
`ivals, concerts and tours
`
`U.S. Registration
`No.
`
`5921087
`
`Registration Date
`
`11/26/2019
`
`Application Date
`
`07/03/2019
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`VANS "OFF THE WALL"
`
`The mark consists of a skateboard design with the words "VANS "OFF THE
`WALL"" inside.
`
`Class 028. First use: First Use: 2015/09/01 First Use In Commerce: 2015/09/01
`Traction pads for sports equipment boards, namely, snowboards
`
`U.S. Registration
`No.
`
`4932799
`
`Registration Date
`
`04/05/2016
`
`Word Mark
`
`Design Mark
`
`VANS "OFF THE WALL"
`
`Application Date
`
`06/17/2013
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`
`The mark consists of a circle with the word "VANS" in stylized form in the center
`
`

`

`Mark
`
`Goods/Services
`
`left and a small island with two palmtrees in the center right, with the wording
`""OFF THE WALL"" in block letters in an arc at the bottom inside of the circle.
`
`Class 018. First use: First Use: 2011/05/01 First Use In Commerce: 2012/06/01
`All-purpose carrying bags, Beach bags, Book bags, Messenger bags, Overnight
`bags, Travel Bags, School bags, Shoulder bags, Sling bags, Tote bags, Hand-
`bags, Multi-purpose purses, Backpacks, wallets, clutches, crossbody bags
`Class 025. First use: First Use: 2011/05/01 First Use In Commerce: 2012/06/01
`Footwear; sneakers; high-top shoes; sandals; flip flops; skateboarding shoes;
`surf shoes; moccasins; Apparel, namely, T-shirts, shirts, dresses, tank tops,
`sweatshirts, pants, shorts, denim pants, denim shorts, sweaters, hooded sweat-
`ers, jackets, hats, caps, beanies, belts, boxers, socks, scarves, underwear,
`swimwear and board shorts
`
`U.S. Registration
`No.
`
`4586901
`
`Registration Date
`
`08/19/2014
`
`Application Date
`
`04/19/2013
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`HOUSE OF VANS
`
`NONE
`
`Class 035. First use: First Use: 2010/10/16 First Use In Commerce: 2010/10/16
`online and in-store retail store services featuring clothing, accessories and foot-
`wear
`Class 041. First use: First Use: 2010/10/16 First Use In Commerce: 2010/10/16
`Entertainment services, namely, conducting skateboarding, BMX competitions,
`concerts, open mic sessions; Entertainment in the nature of a skateboarding and
`BMXpark
`
`U.S. Registration
`No.
`
`3922443
`
`Registration Date
`
`02/22/2011
`
`Application Date
`
`05/07/2010
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`VANS MOUNTAIN EDITION
`
`The mark consists of "VANS" with an extended "V" leg with the words "MOUN-
`TAIN EDITION" below it, all of which are inside an outline of a mountain.
`
`Class 025. First use: First Use: 1989/03/01 First Use In Commerce: 1989/03/01
`footwear [, clothing, namely, T-shirts,shirts, sweatshirts, pants, shorts, jackets,
`hats, caps, beanies, belts, boxers, socks, scarves, underwear and swimwear]
`
`U.S. Registration
`No.
`
`3204987
`
`Registration Date
`
`02/06/2007
`
`Application Date
`
`09/17/2004
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`VAULT BY VANS
`
`NONE
`
`Class 025. First use: First Use: 2002/12/10 First Use In Commerce: 2002/12/10
`Footwear
`
`

`

`U.S. Registration
`No.
`
`5071701
`
`Registration Date
`
`11/01/2016
`
`Application Date
`
`01/12/2016
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`STURDY STRETCH BY VANS
`
`NONE
`
`Class 025. First use: First Use: 2014/10/01 First Use In Commerce: 2014/10/01
`Footwear; Clothing, namely, shirts, t-shirts, tank tops, sweaters, jackets, pants,
`jeans, leggings, shorts, board shorts, skirts, dresses, swimwear, socks, belts,
`scarves, gloves and underwear; Headwear
`
`U.S. Registration
`No.
`
`5071643
`
`Registration Date
`
`11/01/2016
`
`Application Date
`
`12/28/2015
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`STURDY STRETCH BY VANS
`
`The mark consists of "STURDY STRETCH BYVANS" in stylized font contained
`withinan asymmetrical four-sided shape with the word "STRETCH" appearing in
`the center and an outline surrounding it in whichthe word "STURDY" appears in
`the top left corner and "by VANS" appears in the bottom right corner.
`
`Class 025. First use: First Use: 2014/10/01 First Use In Commerce: 2014/10/01
`Footwear; Clothing, namely, shirts, t-shirts, tank tops, sweaters, jackets, pants,
`jeans, leggings, shorts, board shorts, skirts, dresses, swimwear, socks, belts,
`scarves, gloves and underwear; Headwear
`
`U.S. Registration
`No.
`
`5784646
`
`Registration Date
`
`06/25/2019
`
`Application Date
`
`11/09/2017
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`VANS FAMILY
`
`NONE
`
`Class 009. First use: First Use: 2017/10/25 First Use In Commerce: 2017/10/25
`Downloadable application software for mobile devices for administering a cus-
`tomer loyalty program which provides incentive rewards to customers to pro-
`mote the sale of footwear, accessories, and apparel through the issuance and
`processing of loyalty points
`Class 035. First use: First Use: 2017/10/25 First Use In Commerce: 2017/10/25
`Administration of a customer loyalty program which provides incentive rewards
`to customers to promote the sale of footwear, accessories, and apparel through
`the issuance and processing of loyalty points
`
`U.S. Registration
`No.
`
`5962867
`
`Registration Date
`
`01/14/2020
`
`Word Mark
`
`VANS
`
`Application Date
`
`11/19/2018
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 035. First use: First Use: 2019/11/11 First Use In Commerce: 2019/11/11
`Promoting the charitable services of others, namely, providing individuals within-
`formation about various charities forthe purpose of making donations to charit-
`ies; Charitable services, namely, organizing and conducting volunteer program-
`sand community service projects; Developing and coordinating volunteer project
`for charitable organizations
`
`U.S. Registration
`No.
`
`6109518
`
`Registration Date
`
`07/21/2020
`
`Application Date
`
`11/21/2018
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`VANS
`
`The mark consists of six trapezoid shapes vertically stacked and centered on
`one another with the stylized mark "VANS" centered in the top two trapezoids.
`
`Class 025. First use: First Use: 1986/12/31 First Use In Commerce: 1986/12/31
`apparel, namely, tops
`
`U.S. Registration
`No.
`
`6062935
`
`Registration Date
`
`05/26/2020
`
`Application Date
`
`09/18/2019
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`VANS SIDESTRIPE SESSIONS
`
`NONE
`
`Class 041. First use: First Use: 2018/10/08 First Use In Commerce: 2018/10/08
`Providing non-downloadable, online videos featuring music performances and
`exhibition of art
`
`U.S. Registration
`No.
`
`6007688
`
`Registration Date
`
`03/10/2020
`
`Application Date
`
`08/20/2019
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`VANS OFF THE WALL
`
`NONE
`
`Class 025. First use: First Use: 1992/00/00 First Use In Commerce: 1992/00/00
`Footwear
`
`U.S. Registration
`No.
`
`6161987
`
`Registration Date
`
`09/29/2020
`
`Word Mark
`
`Design Mark
`
`VANS DUCT TAPE
`
`Application Date
`
`10/08/2019
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 041. First use: First Use: 2017/12/07 First Use In Commerce: 2017/12/07
`Entertainment services, namely, arranging and conducting competitions and
`festivals in the field of ocean sports
`
`U.S. Registration
`No.
`
`6102998
`
`Registration Date
`
`07/14/2020
`
`Application Date
`
`12/21/2018
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`VANS PRO
`
`NONE
`
`Class 041. First use: First Use: 2019/10/28 First Use In Commerce: 2019/10/28
`Entertainment services in the nature ofconducting of sports competitions;
`Providing sports facilities for action sports; Entertainment services, namely, pro-
`duction and distribution of on-line television programs featuring sports and
`news;Organizing art and sports competitions;Educational services, namely, con-
`ducting classes, workshops, camps, and clinicsin the fields of art and action
`sports;Entertainment services, namely, organizing and conducting international
`competitions in the field of ocean sports
`
`U.S. Registration
`No.
`
`6248317
`
`Registration Date
`
`01/19/2021
`
`Application Date
`
`11/27/2018
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`VANS
`
`The mark consists of checkerboard pattern in a rectangular form with the styl-
`ized mark "VANS" appearing in the center of the checkerboard with a single line
`running across the top, diagonal, and below the pattern.
`
`Goods/Services
`
`Class 025. First use: First Use: 1982/12/31 First Use In Commerce: 1982/12/31
`apparel, namely, tops
`
`U.S. Application
`No.
`
`88414507
`
`Application Date
`
`05/03/2019
`
`Registration Date
`
`NONE
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`VANS
`
`NONE
`
`Class 009. First use: First Use: 0 First Use In Commerce: 0
`Protective covers and cases for cell phones; Protective covers and cases for
`laptops; Protective covers and cases for portable media players; Protective cov-
`ersand cases for tablet computers
`
`U.S. Application
`No.
`
`88414530
`
`Application Date
`
`05/03/2019
`
`Registration Date
`
`NONE
`
`Foreign Priority
`
`NONE
`
`

`

`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`VANS "OFF THE WALL"
`
`Date
`
`The mark consists of a skateboard with the words "VANS "OFF THE WALL"" in-
`side.
`
`Class 009. First use: First Use: 0 First Use In Commerce: 0
`Eyewear; Eyewear cases; Eyewear pouches; Protective covers and cases for
`cell phones; Protective covers and cases for laptops; Protective covers and
`cases for portable media players; Protective covers and cases for tablet com-
`puters; Protective eyewear; Sunglasses
`
`U.S. Application
`No.
`
`88169886
`
`Application Date
`
`10/25/2018
`
`Registration Date
`
`NONE
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`VANS PARK SERIES
`
`NONE
`
`Class 025. First use: First Use: 2017/07/30 First Use In Commerce: 2017/07/30
`Clothing, namely, jackets, shirts, and t-shirts; Headwear; Caps being headwear
`Class 041. First use: First Use: 2017/07/30 First Use In Commerce: 2017/07/30
`Arranging, organizing, and conducting sports competitions; Arranging, organiz-
`ing, and conducting skateboarding competitions; Providing information in the
`fieldof sports competitions; Providing information in the field of skateboarding
`andskateboarding competitions
`
`U.S. Application
`No.
`
`88206495
`
`Application Date
`
`11/27/2018
`
`Registration Date
`
`NONE
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`VANS "OFF THE WALL"
`
`The mark consists of a rectangular label featuring the mark "VANS "OFF THE
`WALL"" in white on a black representation ofa skateboard with white wheel de-
`tail and a white line under ""OFF THE WALL"", all on a white background. The
`dotted outline of the footwear is not claimed as part of the mark and is intended
`only to show the position of the mark.
`
`Goods/Services
`
`Class 025. First use: First Use: 0 First Use In Commerce: 0
`footwear
`
`U.S. Application
`No.
`
`88206499
`
`Application Date
`
`11/27/2018
`
`Registration Date
`
`NONE
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`VANS "OFF THE WALL"
`
`The mark consists of a rectangular label featuring the mark "VANS "OFF THE
`WALL"" in white on a red representation of askateboard with white wheel detail
`and a white line under ""OFF THE WALL"", allon a white background. The dot-
`ted outline of the footwear is not claimed as part of the mark and is intended
`
`

`

`only to show the position of the mark.
`
`Goods/Services
`
`Class 025. First use: First Use: 0 First Use In Commerce: 0
`footwear
`
`U.S. Application
`No.
`
`88206504
`
`Application Date
`
`11/27/2018
`
`Registration Date
`
`NONE
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`VANS "OFF THE WALL"
`
`The mark consists of a rectangular label featuring the mark "VANS "OFF THE
`WALL"" in red on a white representation of askateboard with red wheel detail
`and a red line under ""OFF THE WALL"", all on a red background. The dotted
`outline of the footwear is not claimed as part of the mark and is intended only to
`show theposition of the mark.
`
`Goods/Services
`
`Class 025. First use: First Use: 0 First Use In Commerce: 0
`footwear
`
`U.S. Application
`No.
`
`88797340
`
`Application Date
`
`02/14/2020
`
`Registration Date
`
`NONE
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`VANS OFF THE WALL GALLERY
`
`The mark consists of the words VANS OFFTHE WALL GALLERY presented in a
`stackedand stylized format.
`
`Class 025. First use: First Use: 0 First Use In Commerce: 0
`Belts; Boardshorts; Bottoms as clothing; Capris; Coats; Dresses; Footwear;
`Gloves; Headwear; Insoles; Jackets; Jeans; Leggings; Mittens; Pants; Rain
`wear; Scarves; Shirts; Shorts; Skirts; Socks; Sweat jackets; Sweat pants; Sweat
`shirts; Sweaters; Tops as clothing; Under garments; Vests
`
`U.S. Application
`No.
`
`88637167
`
`Application Date
`
`10/01/2019
`
`Registration Date
`
`NONE
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`VANS "OFF THE WALL"
`
`NONE
`
`Class 018. First use: First Use: 0 First Use In Commerce: 0
`All-purpose carrying bags; Backpacks; Collars for pets; Crossbody bags;
`Drawstring bags; Duffle bags; Handbags; Hip bags; Leashes for animals; Mes-
`senger bags; Purses; Toiletry bags sold empty; Tote bags; Travel bags; Umbrel-
`las; Waist bags;Wallets
`Class 025. First use: First Use: 0 First Use In Commerce: 0
`Belts; Boardshorts; Bottoms as clothing; Capris; Coats; Dresses; Footwear;
`Gloves; Headwear; Insoles; Jackets; Jeans; Leggings; Mittens; Pants; Rain
`wear; Scarves; Shirts; Shorts; Skirts; Socks; Sweat jackets; Sweat pants; Sweat
`shirts; Sweaters; Tops as clothing; Undergarments;Vests
`
`

`

`Attachments
`
`20210211 vanswe noo .pdf(837362 bytes )
`20210211 Exhibit A VANSWE NOO.pdf(2394822 bytes )
`20210211 Exhibit B VANSWE NOO.pdf(712820 bytes )
`
`Signature
`
`/mrr/
`
`Name
`
`Date
`
`MICHAEL R RIZZO
`
`02/11/2021
`
`

`

`
`VANS, INC.,
`
`
`
`
`v.
`
`
`SUZHOU WAN SHI WEI TRADING
`LIMITED CO.
`
`
`Applicant.
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`Opposer,
`
`
`
`
`
`Opposition No. ___________
`
`Serial No.: 88903225
`
`
`
`Mark:
`
`
`
`
`
`Filing Date: May 6, 2020
`
`
`
`
`
`
`
`
`NOTICE OF OPPOSITION
`
`Opposer Vans, Inc. (“Vans”), a Delaware corporation with its principal place of business at 1588 South
`
`Coast Drive, Costa Mesa, California 92626, believes that it will be damaged by the registration of the mark
`
`VANSWE & Design (depicted below) that is the subject of Application Serial No. 88903225, filed by Suzhou
`
`Wan Shi Wei Trading Limited Co. (“Applicant”).
`
`
`
`As grounds for its opposition, Vans alleges the following upon actual knowledge with respect to itself
`
`and its own acts, and upon information and belief as to other matters:
`
`Vans, Its Goods and Services, and Its Famous VANS Trademark
`
`1.
`
`Founded in 1966 in Anaheim, California, by Van Doren brothers Paul and Jim, along with
`
`partners Gordon Lee and Serge Delia, Vans has grown from humble roots to become one of the most well-
`
`known and groundbreaking footwear, apparel, and accessory companies in the world.
`
`2.
`
`Vans’ products are widely recognized and extremely popular. The company has achieved
`
`recognition as ranking among the world’s greatest and most recognizable brands. For decades, Vans has
`
`consistently used its iconic VANS trademark in connection with footwear, apparel, accessories, sporting goods,
`
`
`
`1
`
`

`

`and related services. The VANS trademark is known throughout the world to indicate the source of Vans’
`
`high-quality products and services. Over the years, Vans has used its distinctive VANS trademark to sell tens
`
`of millions of pairs of shoes and millions of units of apparel, accessories, and sporting goods in the United
`
`States.
`
`3.
`
`Much of Vans’ success is owed to its enduring reputation for creating lasting and durable
`
`products without sacrificing comfort or style, and perhaps just as important, its longstanding and consistent
`
`use of the VANS house mark. The consistent use of its distinctive brand combined with Vans’ peerless
`
`reputation for lifestyle and active shoes, apparel, and accessories, has been instrumental in Vans’ lasting
`
`popularity.
`
`4.
`
`For more than 50 years – long prior to Applicant’s filing date or its alleged date of first use –
`
`Vans has consistently used its VANS trademark across Vans’ extensive product line in connection with its
`
`products and services and invested many millions of dollars marketing and promoting the VANS trademark.
`
`5.
`
`Reflecting its significant growth and expansion, Vans owns numerous federal registrations and
`
`applications for its VANS trademarks covering a wide variety of products and services.
`
`6.
`
`For years, Vans has offered and achieved considerable sales on a variety of footwear, apparel,
`
`accessories, and related products prominently bearing the VANS trademark, e.g.:
`
`
`
`
`
`
`
`Footwear
`
`2
`
`

`

`
`
`Apparel and Headwear
`
`
`
`
`
`3
`
`

`

`
`
`Bags and Accessories
`
`
`
`
`
`
`
`4
`
`

`

`
`
`
`
`
`
`
`
`Sporting Goods, Stickers, and Product Care Goods
`
`
`
`5
`
`

`

`
`
`
`
`Retail Store Services and Customer Loyalty Programs
`
`
`
`6
`
`

`

`
`
`
`
`
`
`
`
`
`
`
`
`
`Entertainment and Sports Competition Services
`
`
`
`
`
`7
`
`
`
`
`
`

`

`7.
`
`Vans has sold billions of dollars’ worth of products under its VANS trademark. Vans’ products
`
`bearing its VANS trademark are promoted, offered, and sold nationwide through a wide variety of retail means,
`
`including thousands of retails stores. These retail stores include national, regional, independent, and specialty
`
`retailers such as Zumiez, Dick’s Sporting Goods, Foot Locker, Journeys, PacSun, DSW, WalMart, and
`
`JCPenney. Vans also maintains a global network of proprietary retail stores, include flagship locations in major
`
`metropolitan areas through the world.
`
`8.
`
`Vans products are also offered and sold in connection with its VANS trademark through the
`
`websites of many of its retailers, as well as, through Vans’ own proprietary e-commerce websites.
`
`9.
`
`For years, Vans has spent tens of millions of dollars annually advertising and promoting its
`
`VANS trademark and products and services to the general public. Vans has widely and extensively promoted
`
`its VANS trademark and products through virtually every available type of media, including print publications,
`
`out-of-home signage, and the internet.
`
`10.
`
`Vans has run extensive nationwide advertising campaigns that reinforce the VANS trademark
`
`as a powerful shorthand for Vans and its extensive product offerings.
`
`11.
`
`With respect to print publications, Vans has advertised and promoted its VANS trademark in
`
`a wide variety of nationally circulated magazines.
`
`12.
`
`The VANS trademark has also been featured on billboards and signage across the United
`
`States in high visibility locations.
`
`13.
`
`Vans also promotes and markets its VANS trademark on its own and authorized websites and
`
`social media
`
`sites,
`
`including
`
`vans.com,
`
`facebook.com/VANS,
`
`twitter.com/VANS_66,
`
`and
`
`instagram.com/vans, among others.
`
`14.
`
`Further, Vans’ VANS trademark and products are advertised and promoted through many of
`
`its retail partners’ websites, including the sites used by Nordstrom, WalMart, Barneys, ASOS, and Famous
`
`Footwear, among others.
`
`15.
`
`Sponsorships and individual athlete and celebrity agreements represent another significant
`
`form of advertising and promotion by Vans. Vans’ VANS trademark