Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
`ESTTA1207404
`05/06/2022
`
`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
`
`1661, Inc.
`
`05/07/2022
`
`3433 W. EXPOSITION PLACE
`LOS ANGELES, CA 90018
`UNITED STATES
`
`JENNIFER L. BARRY
`LATHAM & WATKINS LLP
`650 TOWN CENTER DRIVE, SUITE 2000
`COSTA MESA, CA 92626
`UNITED STATES
`Primary email: ipdocket@lw.com
`Secondary email(s): ipdocket2@lw.com, tara.villegas@lw.com
`7145401235
`
`Docket no.
`
`065376-4
`
`Applicant information
`
`Application no.
`
`90719633
`
`Opposition filing
`date
`
`Applicant
`
`05/06/2022
`
`Design Send, LLC
`2147 W MOFFAT ST
`CHICAGO, IL 60647
`UNITED STATES
`
`Publication date
`
`03/08/2022
`
`Opposition period
`ends
`
`05/07/2022
`
`Goods/services affected by opposition
`
`Class 025. First Use: May 1, 2021 First Use In Commerce: May 1, 2021
`All goods and services in the class are opposed, namely: Raincoats; Waterproof boots; Waterproof-
`jackets and pants
`
`Grounds for opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`Marks cited by opposer as basis for opposition
`
`U.S. registration
`no.
`
`3506834
`
`Register
`
`Principal
`
`Application date
`
`07/08/2004
`
`

`

`Registration date
`
`09/30/2008
`
`Word mark
`
`Design mark
`
`GOAT
`
`Foreign priority
`date
`
`03/29/2004
`
`Description of
`mark
`
`Goods/services
`
`NONE
`
`Class 025. First use: First Use: Aug 2001 First Use In Commerce: Aug 2003
`Clothing, namely, shirts, pants; knitwear, namely, knit shirts; ladies' clothing,
`namely, dress suits; coats, frocks, skirts, dresses, jackets, clothing jerseys,
`sweaters, trousers, clothing tops, and fashion clothing, namely evening gowns
`
`U.S. registration
`no.
`
`4103419
`
`Register
`
`Principal
`
`Registration date
`
`02/28/2012
`
`Word mark
`
`Design mark
`
`GOAT
`
`Application date
`
`10/05/2007
`
`Foreign priority
`date
`
`10/04/2007
`
`Description of
`mark
`
`Goods/services
`
`NONE
`
`Class 035. First use: First Use: None First Use In Commerce: None
`[ Wholesale distributorships featuring clothing and clothing accessories; retail
`store services featuring clothing and clothing accessories; promoting the goods
`and services of others by means of operating an on-line shopping mall with links
`to the retail websites of others; mail order catalog services featuring clothing and
`clothing accessories; ] Catalog ordering service featuring clothing and clothing
`accessories; online retail store services featuring clothing and clothing accessor-
`ies; [ business consultancy, ] information [, and advisory ] servicesrelating to all
`of the above services
`
`U.S. registration
`no.
`
`5066855
`
`Register
`
`Principal
`
`Application date
`
`06/24/2015
`
`

`

`Registration date
`
`10/25/2016
`
`Word mark
`
`Design mark
`
`KID BY GOAT
`
`Foreign priority
`date
`
`NONE
`
`Description of
`mark
`
`Goods/services
`
`NONE
`
`Class 025. First use: First Use: None First Use In Commerce: None
`Children's clothing and knitwear, namely, children's coats, frocks, skirts,
`dresses, jackets, jerseys, sweaters, trousers, shorts, scarves, and tops, all be-
`ingwoven or knitted
`
`U.S. registration
`no.
`
`4908318
`
`Register
`
`Principal
`
`Registration date
`
`03/01/2016
`
`Word mark
`
`Design mark
`
`GOAT
`
`Application date
`
`07/24/2015
`
`Foreign priority
`date
`
`NONE
`
`Description of
`mark
`
`Goods/services
`
`NONE
`
`Class 009. First use: First Use: Jan 29, 2015 First Use In Commerce: Apr 1,
`2015
`Computer application software allowing users to find, research, analyze, com-
`pare, sell, and purchase goods and servicesvia the Internet, global computer
`communication networks, and wireless telecommunications networks
`
`U.S. registration
`no.
`
`5357448
`
`Register
`
`Principal
`
`Registration date
`
`12/19/2017
`
`Word mark
`
`GOAT
`
`Application date
`
`07/24/2015
`
`Foreign priority
`date
`
`NONE
`
`

`

`Design mark
`
`Description of
`mark
`
`Goods/services
`
`NONE
`
`Class 035. First use: First Use: Jan 29, 2015 First Use In Commerce: Apr 1,
`2015
`Providing an online marketplace for buyers and sellers of collectible consumer
`goods namely, athletic and sporting footwear; database management services;
`providing a website featuring evaluative feedback in the form of ratings, reviews,
`recommendations and other consumer information regarding the value and
`prices of sellers' goods, buyers' and sellers' performance, delivery, and transac-
`tion experience for commercial purposes; providing a searchable advertising
`guide featuring the goods and services of sellers; advertising and advertising
`services
`
`U.S. registration
`no.
`
`5020477
`
`Register
`
`Principal
`
`Registration date
`
`08/16/2016
`
`Word mark
`
`Design mark
`
`GOAT
`
`Application date
`
`07/24/2015
`
`Foreign priority
`date
`
`NONE
`
`Description of
`mark
`
`Goods/services
`
`NONE
`
`Class 038. First use: First Use: Jan 29, 2015 First Use In Commerce: Apr 1,
`2015
`Telecommunication services, namely transmission of electronic messages, text
`messages, and push-notification alerts between consumer product buyers and
`sellerson the Internet, global computer communications networks, and wireless
`telecommunications networks
`
`U.S. registration
`no.
`
`5020478
`
`Register
`
`Principal
`
`Application date
`
`07/24/2015
`
`Registration date
`
`08/16/2016
`
`Foreign priority
`
`NONE
`
`

`

`Word mark
`
`Design mark
`
`GOAT
`
`date
`
`Description of
`mark
`
`Goods/services
`
`NONE
`
`Class 042. First use: First Use: Jan 29, 2015 First Use In Commerce: Apr 1,
`2015
`Providing temporary use of online non-downloadable software for electronic
`business transactions in online marketplacesutilizing the Internet, global com-
`putercommunication networks, and wireless telecommunications networks; au-
`thentication services in the field of collectible consumer goods, namely, the in-
`spection and verification of authenticity of athletic and sporting footwear, appar-
`el, and works of art
`
`Attachments
`
`76601390#TMSN.png( bytes )
`77297475#TMSN.png( bytes )
`86672544#TMSN.png( bytes )
`86703345#TMSN.png( bytes )
`86703347#TMSN.png( bytes )
`86703348#TMSN.png( bytes )
`86703350#TMSN.png( bytes )
`2022_05_06_Notice of Opposition re RAINGOAT.pdf(237449 bytes )
`
`Signature
`
`/s/ Jennifer L. Barry
`
`Name
`
`Date
`
`JENNIFER L. BARRY
`
`05/06/2022
`
`

`

`
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`
`Opposition No. ______________
`
`
`NOTICE OF OPPOSITION
`
`In re Application No. 90719633
`Filed: May 18, 2021
`Published: March 8, 2022
`Trademark: RAINGOAT
`
`
`1661, Inc. d/b/a GOAT,
`
`Opposer,
`
`
`
`v.
`
`Design Send, LLC,
`
`Applicant.
`
`
`
`
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`United States Patent and Trademark Office
`Trademark Trial and Appeal Board
`P.O. Box 1451
`Alexandria, VA 22313-1451
`
`
`1661, Inc. d/b/a Goat (“Opposer”), a Delaware corporation with a principal place of
`
`business at 3433 W. Exposition Place, Los Angeles, CA 90018, believes it will be damaged by
`
`registration of the mark RAINGOAT (Serial No. 90719633, the “Application”) filed by Design
`
`Send, LLC (“Applicant”) for “Raincoats; Waterproof boots; Waterproof jackets and pants” in
`
`Class 25 (“Applicant’s Mark”).
`
`Therefore, in accordance with the provisions of Section 13 of the Trademark Act (15
`
`U.S.C. § 1063), Opposer opposes the Application.
`
`
`
`As grounds for opposition, Opposer alleges as follows:
`
`1. Opposer operates the wildly popular e-commerce platform GOAT®, which is
`
`
`US-DOCS\131750017.1
`
`

`

`
`
`available on both a mobile app and a website (www.goat.com). The GOAT® app and site
`
`facilitate the buying and selling, as well as authentication, of collectible sneakers, clothing,
`
`jewelry, purses, wallets, bags, and various fashion accessory items, as shown here:
`
`2. In addition to its common law rights, Opposer owns the following U.S.
`
`
`
`registrations (the “GOAT Marks”):
`
`Mark
`
`Class and Description of Goods and Services
`
`GOAT Class 25: Clothing, namely, shirts, pants; knitwear, namely, knit
`shirts; ladies' clothing, namely, dress suits; coats, frocks, skirts,
`dresses, jackets, clothing jerseys, sweaters, trousers, clothing
`tops, and fashion clothing, namely evening gowns
`GOAT Class 35: Catalog ordering service featuring clothing and
`clothing accessories; online retail store services featuring
`clothing and clothing accessories; information services relating
`to all of the above services
`
`Reg. No.
`Reg. Date
`
`U.S.
`3506834
`09/30/2008
`
`U.S.
`4103419
`02/28/2012
`
`US-DOCS\131750017.1
`
`2
`
`

`

`
`
`Mark
`
`Class and Description of Goods and Services
`
`KID BY
`GOAT
`
`Class 25: Children's clothing and knitwear, namely, children's
`coats, frocks, skirts, dresses, jackets, jerseys, sweaters, trousers,
`shorts, scarves, and tops, all being woven or knitted
`
`GOAT Class 9: Computer application software allowing users to find,
`research, analyze, compare, sell, and purchase goods and
`services via the Internet, global computer communication
`networks, and wireless telecommunications networks
`GOAT Class 35: Providing an online marketplace for buyers and sellers
`of collectible consumer goods namely, athletic and sporting
`footwear; database management services; providing a website
`featuring evaluative feedback in the form of ratings, reviews,
`recommendations and other consumer information regarding the
`value and prices of sellers' goods, buyers' and sellers'
`performance, delivery, and transaction experience for
`commercial purposes; providing a searchable advertising guide
`featuring the goods and services of sellers; advertising and
`advertising services
`GOAT Class 38: Telecommunication services, namely transmission of
`electronic messages, text messages, and push-notification alerts
`between consumer product buyers and sellers on the Internet,
`global computer communications networks, and wireless
`telecommunications networks
`
`GOAT Class 42: Providing temporary use of online non-downloadable
`software for electronic business transactions in online
`marketplaces utilizing the Internet, global computer
`communication networks, and wireless telecommunications
`networks; authentication services in the field of collectible
`consumer goods, namely, the inspection and verification of
`authenticity of athletic and sporting footwear, apparel, and
`works of art
`
`
`
`Reg. No.
`Reg. Date
`
`U.S.
`5066855
`10/25/2016
`
`U.S.
`4908318
`03/01/2016
`
`U.S.
`5357448
`12/19/2017
`
`U.S.
`5020477
`08/16/2016
`
`U.S.
`5020478
`08/16/2016
`
`3. Applicant, located at 2147 W Moffat St, Chicago, Illinois 60647, seeks to register
`
`the mark RAINGOAT for “Raincoats; Waterproof boots; Waterproof jackets and pants” in
`
`Class 25 (first use date: May 1, 2021). Applicant filed the Application on May 18, 2021.
`
`4. Opposer’s filing dates and first use dates establish priority over Applicant’s Mark
`
`as they predate Applicant’s filing and first use dates.
`
`5. Applicant’s claimed goods directly overlap with Opposer’s goods.
`
`US-DOCS\131750017.1
`
`3
`
`

`

`
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`6. Applicant’s RAINGOAT mark closely resembles Opposer’s GOAT Marks, and
`
`incorporates the entire GOAT® mark.
`
`7. Therefore, when used in connection with Applicant’s goods, Applicant’s Mark is
`
`likely to cause confusion, to cause mistake, or to deceive consumers as to an affiliation,
`
`connection, or association between Opposer and Applicant or as to the origin, sponsorship, or
`
`approval of Applicant’s goods, with consequent injury to Opposer and the public under
`
`Trademark Act § 2(d).
`
`8. Opposer will be damaged by the registration sought by Applicant because such
`
`registration would support and assist Applicant in the confusing, misleading, and deceptive use
`
`of Applicant’s Mark and would give to Applicant the color of exclusive statutory rights to such
`
`a mark in violation of Opposer’s superior rights.
`
`9. WHEREFORE, Opposer prays that its opposition be sustained and that the
`
`Application be refused.
`
`
`
`Dated: May 6, 2022
`
`Respectfully submitted,
`
`
`
`
`By
`Jennifer L. Barry
` Adam A. Herrera
`12670 High Bluff Drive
`San Diego, CA 92130
`858.523.5400 / 858.523.5450 Fax
`jennifer.barry@lw.com
`adam.herrera@lw.com
`ipdocket@lw.com
`
`Attorneys for Opposer
`1661, Inc. d/b/a GOAT
`
`
`
`
`
`US-DOCS\131750017.1
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`
`
`4
`
`

`

`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a true and complete copy of the foregoing NOTICE OF
`
`OPPOSITION has been served on May 6, 2022, by emailing and mailing said copy via First
`
`Class Mail, postage prepaid to Applicant:
`
`Design Send, LLC
`2147 W. Moffat Street
`Chicago, IL 60647
`sheadbeck@hotmail.com
`
`
`
`
`
`
` Jennifer L. Barry
`
`
`
`
`
`
`US-DOCS\131750017.1
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`5
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`