Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
`ESTTA1207623
`05/09/2022
`
`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
`
`Correspondence
`information
`
`Chapter 4 Corp.
`
`05/11/2022
`
`62 KING STREET
`NEW YORK, NY 10014
`UNITED STATES
`
`LISA M. WILLIS
`CHAPTER 4 CORP.
`62 KING STREET
`NEW YORK, NY 10014
`UNITED STATES
`Primary email: ipdocket@supremenewyork.com
`No phone number provided
`
`Applicant information
`
`Application no.
`
`90649775
`
`05/09/2022
`
`Opposition filing
`date
`
`Applicant
`
`Publication date
`
`01/11/2022
`
`Opposition period
`ends
`
`05/11/2022
`
`Sun Dezhi
`ROOM 1230, NO. 259, NANLIU ROAD,
`CHENGYANG DISTRICT, QINGDAO,
`SHANDONG, 266000
`CHINA
`
`Goods/services affected by opposition
`
`Class 028. First Use: Jan 12, 2021 First Use In Commerce: Jan 12, 2021
`All goods and services in the class are opposed, namely: Puzzles; Air mattress swimming floats for
`recreational use; Ascenders being mountaineering equipment; Baby multiple activity toys; Baseball
`gloves; Christmas tree ornaments and decorations; Educational toys for teaching math principles to
`children, namely, manipulative blocks for displaying patterns and groupings; Electronic animal calls
`for recreation and hunting activities; Equipment for skateboard parks for skateboarding, inline skating,
`and BMX freestyle biking, namely, ramps; Gymnastics rings; Hoops for rhythmic sportive gymnastics;
`Pet toys; Physical fitness equipment, namely, exercise bands; Physical fitness equipment, namely,
`training bars; Stuffed and plush toys; Water toys; Yoga blocks made of foam for use in fitness prac-
`tice
`
`Grounds for opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`No use of mark in commerce before application,
`
`Trademark Act Section 1(a) and (c)
`
`

`

`amendment to allege use, or statement of use
`was due
`
`Dilution by blurring
`
`Trademark Act Sections 2 and 43(c)
`
`Marks cited by opposer as basis for opposition
`
`U.S. registration
`no.
`
`5592852
`
`Register
`
`Principal
`
`Registration date
`
`10/30/2018
`
`Word mark
`
`Design mark
`
`SUP
`
`Application date
`
`10/19/2016
`
`Foreign priority
`date
`
`NONE
`
`Description of
`mark
`
`Goods/services
`
`The mark consists of a red square containing the verbiage "SUP" in white let-
`ters.
`
`Class 025. First use: First Use: Mar 1, 2006 First Use In Commerce: Mar 1,
`2006
`Clothing, namely, shirts, t-shirts, tank tops, sweat shirts, long-sleeved shirts, un-
`der shirts, denim jeans, hooded sweat shirts, boxer shorts, tops, sweat jackets,
`sweat shorts, sweat pants, sweaters, long underwear, underclothes, caps, hats,
`knit caps, headwear, footwear, shoes and sneakers
`
`U.S. registration
`no.
`
`4157110
`
`Register
`
`Principal
`
`Registration date
`
`06/12/2012
`
`Word mark
`
`SUPREME
`
`Application date
`
`09/16/2011
`
`Foreign priority
`date
`
`NONE
`
`

`

`Design mark
`
`Description of
`mark
`
`Goods/services
`
`NONE
`
`Class 025. First use: First Use: Apr 1994 First Use In Commerce: Apr 1994
`Clothing, namely, shirts, t-shirts, long-sleeved shirts, under shirts, polo shirts,
`rugby shirts, jerseys, dress shirts, denim jeans, hooded sweat shirts, warm-up
`suits, snow suits, parkas, cardigans, pants, jean jackets, cargo pants, shorts,
`boxer shorts, tops, tank tops, sweatshirts, sweat jackets, sweat shorts, sweat
`pants, sweaters, vests, fleece vests, pullovers, jackets, coats, blazers, suits, tur-
`tlenecks, reversible jackets, wind-resistant jackets, shell jackets, sports jackets,
`golf and ski jackets, heavycoats, over coats, top coats, swimwear,beachwear, vi-
`sors, headbands, ear muffs, thermal underwear, long underwear, underclothes,
`caps, hats, knit caps, headwear, scarves, bandanas, belts, neckwear, ties,
`robes, gloves, boots, rainwear, footwear, shoes and sneakers
`
`U.S. registration
`no.
`
`4240456
`
`Register
`
`Principal
`
`Registration date
`
`11/13/2012
`
`Word mark
`
`Design mark
`
`SUPREME
`
`Application date
`
`09/16/2011
`
`Foreign priority
`date
`
`NONE
`
`Description of
`mark
`
`Goods/services
`
`NONE
`
`Class 028. First use: First Use: Mar 1996 First Use In Commerce: Mar 1996
`skateboard decks
`
`U.S. registration
`no.
`
`4504231
`
`Register
`
`Principal
`
`Registration date
`
`04/01/2014
`
`Word mark
`
`SUPREME
`
`Application date
`
`03/06/2013
`
`Foreign priority
`date
`
`NONE
`
`

`

`Design mark
`
`Description of
`mark
`
`Goods/services
`
`The mark consists of the word "Supreme"in white block letters against a red
`rectangular background.
`
`Class 025. First use: First Use: Apr 1994 First Use In Commerce: Apr 1994
`Clothing, namely, shirts, t-shirts, long-sleeved shirts, under shirts, polo shirts,
`rugby shirts, jerseys, dress shirts, denim jeans, hooded sweat shirts, warm-up
`suits, [ snow suits, ] parkas, cardigans, pants, jean jackets, cargo pants, shorts,
`boxer shorts, tops, tank tops, sweat shirts, sweat jackets, sweat shorts, sweat
`pants, sweaters, vests, [ fleecevests, ] pullovers, jackets, coats, blazers, suits, [
`turtlenecks, reversible jackets, wind-resistant jackets, shell jackets, sports jack-
`ets, golf and ski jackets, heavy coats, over coats, top coats,] swimwear, beach-
`wear, [ visors, ] headbands, [ ear muffs, ] thermal underwear,long underwear,
`underclothes, caps, hats, knit caps, headwear, scarves, bandanas, belts, [ neck-
`wear, ties, ] robes, gloves, boots, rainwear, footwear, shoes and sneakers
`
`U.S. registration
`no.
`
`4554309
`
`Register
`
`Principal
`
`Registration date
`
`06/24/2014
`
`Word mark
`
`Design mark
`
`SUPREME
`
`Application date
`
`03/06/2013
`
`Foreign priority
`date
`
`NONE
`
`Description of
`mark
`
`Goods/services
`
`The mark consists of the word "Supreme"in white block letters against a red
`rectangular background.
`
`Class 028. First use: First Use: Mar 1996 First Use In Commerce: Mar 1996
`skateboard decks
`
`U.S. registration
`no.
`
`5066669
`
`Register
`
`Principal
`
`Registration date
`
`10/25/2016
`
`Word mark
`
`SUPREME
`
`Application date
`
`03/19/2014
`
`Foreign priority
`date
`
`NONE
`
`

`

`Design mark
`
`Description of
`mark
`
`Goods/services
`
`NONE
`
`Class 018. First use: First Use: Apr 1994 First Use In Commerce: Apr 1994
`All-purpose sports and athletic bags; duffel and travel bags; fanny packs and
`waist packs; backpacks; knapsacks; wallets
`
`U.S. registration
`no.
`
`5066670
`
`Register
`
`Principal
`
`Registration date
`
`10/25/2016
`
`Word mark
`
`Design mark
`
`SUPREME
`
`Application date
`
`03/19/2014
`
`Foreign priority
`date
`
`NONE
`
`Description of
`mark
`
`Goods/services
`
`The mark consists of the word "Supreme"in white block letters against a red
`rectangular background.
`
`Class 018. First use: First Use: Apr 1994 First Use In Commerce: Apr 1994
`All-purpose sports and athletic bags; duffel and travel bags; fanny packs and
`waist packs; backpacks; knapsacks; wallets
`
`U.S. registration
`no.
`
`5763658
`
`Register
`
`Principal
`
`Registration date
`
`05/28/2019
`
`Word mark
`
`Design mark
`
`SUPREME
`
`Application date
`
`03/19/2014
`
`Foreign priority
`date
`
`NONE
`
`

`

`Description of
`mark
`
`Goods/services
`
`The mark consists of the word "Supreme"in white letters against a red rectangu-
`lar background.
`
`Class 018. First use: First Use: Apr 1994 First Use In Commerce: Apr 1994
`Book, carry-on, gym, shoulder and tote bags; satchels; luggage; luggage tags;
`trunks; suitcases; bags sold empty; men'sclutches; business card cases; calling
`and credit card cases; key cases; leather key chains; billfolds; umbrellas
`
`U.S. registration
`no.
`
`5775727
`
`Register
`
`Principal
`
`Registration date
`
`06/11/2019
`
`Word mark
`
`Design mark
`
`SUPREME
`
`Application date
`
`03/19/2014
`
`Foreign priority
`date
`
`NONE
`
`Description of
`mark
`
`Goods/services
`
`NONE
`
`Class 018. First use: First Use: Apr 1994 First Use In Commerce: Apr 1994
`Book, carry-on, gym, shoulder and tote bags; satchels; luggage; luggage tags;
`trunks; suitcases; bags sold empty; men'sclutches; business card cases; calling
`and credit card cases; key cases; leather key chains; billfolds; umbrellas
`
`U.S. registration
`no.
`
`5135326
`
`Register
`
`Principal
`
`Registration date
`
`02/07/2017
`
`Word mark
`
`Design mark
`
`SUPREME
`
`Application date
`
`07/13/2015
`
`Foreign priority
`date
`
`NONE
`
`Description of
`mark
`
`Goods/services
`
`NONE
`
`Class 035. First use: First Use: Apr 1994 First Use In Commerce: Apr 1994
`Retail stores, on-line ordering services and on-line retail store services, andretail
`store services available throughcomputer communications, featuring clothing,
`
`

`

`footwear, headwear, bags, wallets and skateboard decks
`
`U.S. registration
`no.
`
`5135327
`
`Register
`
`Principal
`
`Registration date
`
`02/07/2017
`
`Word mark
`
`Design mark
`
`SUPREME
`
`Application date
`
`07/13/2015
`
`Foreign priority
`date
`
`NONE
`
`Description of
`mark
`
`Goods/services
`
`The mark consists of the word "Supreme"in white block letters against a red
`rectangular background.
`
`Class 035. First use: First Use: Apr 1994 First Use In Commerce: Apr 1994
`Retail stores, on-line ordering services and on-line retail store services, andretail
`store services available throughcomputer communications, featuring clothing,
`footwear, headwear, bags, wallets and skateboard decks
`
`U.S. registration
`no.
`
`5801848
`
`Register
`
`Principal
`
`Registration date
`
`07/09/2019
`
`Word mark
`
`Design mark
`
`SUPREME
`
`Application date
`
`05/22/2018
`
`Foreign priority
`date
`
`NONE
`
`Description of
`mark
`
`Goods/services
`
`The mark consists of the word "Supreme"in white block letters against a red
`rectangular background.
`
`Class 009. First use: First Use: Apr 2007 First Use In Commerce: Apr 2007
`Eyewear; sunglasses; sports eyewear; cases for eyewear, sunglasses and
`sports eyewear; sports goggles; cases for mobilephones; cell phone backplates;
`cell phone cases; cell phone covers; cell phone straps; portable satellite radios
`
`U.S. registration
`no.
`
`6048267
`
`Register
`
`Principal
`
`Registration date
`
`05/05/2020
`
`Word mark
`
`SUPREME
`
`Application date
`
`05/22/2018
`
`Foreign priority
`date
`
`NONE
`
`

`

`Design mark
`
`Description of
`mark
`
`Goods/services
`
`NONE
`
`Class 009. First use: First Use: Apr 2007 First Use In Commerce: Apr 2007
`Eyewear; sunglasses; sports eyewear; cases for eyewear, sunglasses and
`sports eyewear; sports goggles; cases for mobilephones; cell phone backplates;
`cell phone cases; cell phone covers; portable satellite radios
`
`U.S. registration
`no.
`
`6043450
`
`Register
`
`Principal
`
`Registration date
`
`04/28/2020
`
`Word mark
`
`Design mark
`
`SUPREME
`
`Application date
`
`11/19/2018
`
`Foreign priority
`date
`
`NONE
`
`Description of
`mark
`
`Goods/services
`
`The mark consists of the word "Supreme"in white block letters against a red
`rectangular background.
`
`Class 018. First use: First Use: Apr 1994 First Use In Commerce: Apr 1994
`Book, carry-on, gym, shoulder and tote bags; luggage; luggage tags; trunks be-
`ing luggage and suitcases; suitcases; toiletry bags sold empty; toiletry and van-
`ity cases sold empty; tool bags sold empty; business card cases; calling and
`credit card cases; billfolds; umbrellas
`
`U.S. registration
`no.
`
`6146273
`
`Register
`
`Principal
`
`Registration date
`
`09/08/2020
`
`Word mark
`
`SUPREME
`
`Application date
`
`01/29/2020
`
`Foreign priority
`date
`
`NONE
`
`

`

`Design mark
`
`Description of
`mark
`
`Goods/services
`
`The mark consists of the word "Supreme"in white letters against a red rectangu-
`lar background.
`
`Class 016. First use: First Use: May 1994 First Use In Commerce: May 1994
`stickers
`
`U.S. registration
`no.
`
`6621685
`
`Register
`
`Principal
`
`Registration date
`
`01/18/2022
`
`Word mark
`
`Design mark
`
`SUPREME
`
`Application date
`
`03/08/2021
`
`Foreign priority
`date
`
`NONE
`
`Description of
`mark
`
`Goods/services
`
`U.S. application
`no.
`
`The mark consists of the word "Supreme"in white letters against a red rectangu-
`lar background.
`
`Class 014. First use: First Use: 1998 First Use In Commerce: 1998
`Jewelry, namely, necklaces, rings, earrings and watches; Key chains; Stop-
`watches; Pins being jewelry; Ornamental lapel pins
`
`97043300
`
`Application date
`
`09/24/2021
`
`Registration date
`
`NONE
`
`Word mark
`
`Design mark
`
`SUPREME
`
`Foreign priority
`date
`
`NONE
`
`Description of
`mark
`
`Goods/services
`
`The mark consists of the word "Supreme"in white letters against a red rectangu-
`lar background.
`
`Class 021. First use: First Use: 2009 First Use In Commerce: 2009
`Valet trays; thermal insulated containers for food or beverages; flasks; dishes;
`bowls; incense burners; pet drinking bowls; mugs; drinking glassware; water
`bottles sold empty; bottle openers
`
`

`

`Attachments
`
`87208480#TMSN.png( bytes )
`85424627#TMSN.png( bytes )
`85424722#TMSN.png( bytes )
`85868093#TMSN.png( bytes )
`85868116#TMSN.png( bytes )
`86225879#TMSN.png( bytes )
`86225910#TMSN.png( bytes )
`86225846#TMSN.png( bytes )
`86225786#TMSN.png( bytes )
`86691471#TMSN.png( bytes )
`86691492#TMSN.png( bytes )
`87932218#TMSN.png( bytes )
`87932224#TMSN.png( bytes )
`88199285#TMSN.png( bytes )
`88777646#TMSN.png( bytes )
`90565348#TMSN.png( bytes )
`97043300#TMSN.png( bytes )
`2022.5.9 Notice of Opposition against SUPSDZX in class 28 FINAL.pdf(487502
`bytes )
`Exhibits for U.S. Opposition against SUPSDZX in cl 28.pdf(3212578 bytes )
`
`Signature
`
`Name
`
`Date
`
`/Lisa M. Willis/
`
`LISA M. WILLIS
`
`05/09/2022
`
`

`

`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`__________________________________________
`CHAPTER 4 CORP. d/b/a SUPREME,
`
`
`Opposer,
`
`
`
`v.
`
`
`SUN DEZHI,
`
`
`Applicant.
`__________________________________________
`
`
`
`Mark: SUPSDZX
`Serial No.: 90/649,775
`Filing Date: April 16, 2021
`
`
`
`
`
`
`
`
`
` Opposition No. _____________
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`NOTICE OF OPPOSITION
`
`Chapter 4 Corp. d/b/a Supreme, a New York corporation with an address of 62 King
`
`Street, New York, New York 10014 (the “Opposer” and/or “Supreme”), believes that it would be
`
`damaged by the registration of the mark SUPSDZX (“Applicant’s Mark”) filed with the United
`
`States Patent and Trademark Office (the “USPTO”) under Serial No. 90/649,775 in the name of
`
`Sun Dezhi, an individual of Chinese citizenship, with an address of Room 1230, No. 259, Nanliu
`
`Road, Chengyang District, Qingdao, Shandong, China 266000 (“Applicant”), and hereby seeks
`
`to oppose said application. As grounds for the opposition, Opposer hereby alleges:
`
`
`
`
`
`

`

`1.
`
`Opposer owns the famous SUPREME word mark, the SUPREME Box Logo
`
`OPPOSER’S MARKS
`
`mark (
`
`), and the SUP word mark and SUP Box Logo mark (
`
` ) (collectively, the
`
`“SUPREME Marks”) for use in connection with various goods and services, including
`
`skateboards and related accessories.
`
`2.
`
`Opposer owns exclusive federal and common law rights for the SUPREME
`
`Marks, including various registrations and applications for the SUPREME Marks with the
`
`USPTO. See Exhibit A. Opposer also owns hundreds of trademark registrations worldwide for
`
`the SUPREME Marks.
`
`3.
`
`Opposer has use in commerce of its SUPREME Marks beginning at least as early
`
`as April 1994. The first Supreme retail store opened in April 1994 in New York, which offered a
`
`host of clothing, bags, skateboards and related products and accessories. Also, many of
`
`Opposer’s U.S. trademark registrations include the date of first use in commerce as of April
`
`1994.
`
`
`
`
`
`OPPOSER’S PRIOR USE
`
`4.
`
`Opposer has used it famous SUPREME Marks in connection with skateboards
`
`and related accessories beginning in 1994. See Figure 1.
`
`Figure 1. Examples of Opposer’s goods.
`
`
`112640089
`
`
`
`
`
`2
`
`
`
`

`

`5.
`
`Opposer also has collaborated with third parties to create and sell clothing bearing
`
`the SUPREME Marks. For example, SUPREME x Louis Vuitton (2017); SUPREME x Bruce
`
`Lee (2013); SUPREME x Budweiser (2009); SUPREME x The North Face (2008 - ongoing).
`
`See also Figure 2.
`
`Figure 2. SUPREME x Louis Vuitton; and SUPREME x Bruce Lee.
`
`
`
`
`
`6.
`
`By reason of Opposer’s extensive use of the SUPREME Marks, the public closely
`
`associates the famous marks with Opposer and its high-quality SUPREME branded products,
`
`which include boundless categories of items.
`
`
`
`OPPOSER’S FAMOUS SUPREME BRAND
`
`7.
`
`Founded in New York in April 1994 as a “downtown” clothing and skateboard
`
`store, Opposer immediately established itself as a brand known for its quality, style and
`
`authenticity; and as a style guide for youth customers all over the world under the acclaimed
`
`streetwear brand “SUPREME”.
`
`8.
`
`Over 28 years, Opposer has expanded from its New York City origins into a
`
`global brand, working with generations of prominent artists, photographers, designers, and
`
`characters, all of whom have helped perpetuate the brand's unique identity. See Exhibit B.
`
`
`112640089
`
`
`
`3
`
`
`
`

`

`9.
`
`Vogue.com has referred to Supreme as a “Fashion Superpower” and GQ
`
`Magazine UK discussed the “brand’s world domination.” The following are some quotes about
`
`the Opposer’s fame:
`
`• Supreme, an underground streetwear brand with 11 stores and a cult following, is now
`
`worth more than teen retailer Abercrombie & Fitch Co. ANF -4.42%, which has about
`
`900 stores around the globe. - The Wall Street Journal, 2017
`
`• [Retail] [p]rices are hardly astronomical (jeans are about $130; hoodies, $170), but
`
`Supreme cultivates the same covetous frenzy that might greet a new $9,000 Hermès
`
`Birkin bag. - The New York Times, 2012
`
`10.
`
`The Council of Fashion Designers of America, Inc., the preeminent fashion and
`
`accessory designer trade association, awarded Supreme the 2018 Menswear Designer of the Year
`
`award. See Exhibit C.
`
`11.
`
`To commemorate the 20th anniversary of the SUPREME brand in April 2014,
`
`Supreme released the SUPREME Box Logo t-shirt which was first offered for sale and sold
`
`when Supreme opened its doors. See Figure 3.
`
`Figure 3. Supreme 20th Anniversary t-shirt
`
`
`112640089
`
`
`
`
`
`4
`
`
`
`

`

`12.
`
`SUPREME was recognized as “The Most Popular Brand on Grailed”.
`
`Complex.com reported on the ranking and stated that “Supreme is number 1 (again). No
`
`surprises at the top of the list.” See Exhibit D.
`
`13.
`
`The Museum of Modern Art in New York City entered the original t-shirt design
`
`bearing the SUPREME Box Logo as depicted in Figure 3 into its 2017 “Items: Is Fashion
`
`Modern?” exhibition which “explores the present, past—and sometimes the future—of 111
`
`items of clothing and accessories that have had a strong impact on the world in the 20th and 21st
`
`centuries—and continue to hold currency today.” See Exhibit E.
`
`14.
`
`In Spring 2018, the Thyssen-Bornemisza Museum in Spain displayed a co-
`
`branded SUPREME and Louis Vuitton skateboard case in a Louis Vuitton "Time Capsule"
`
`exhibition. See Exhibit F.
`
`15.
`
`Opposer is known for its “seemingly infinite collaborations” (according to
`
`Vogue.com) that expand far beyond traditional categories. According to Sotheby’s, “Artists such
`
`as Rammellzee, Mark Gonzales and Dash Snow would quickly become both friends and
`
`collaborators with Supreme, providing both inspiration and artwork for the store and products.”
`
`These collaborations have resulted in skate decks that are “highly coveted and collectible” and
`
`each “represents a moment in the brand’s quarter-century timeline.” See Exhibits B and G.
`
`16.
`
`Opposer collaborated with The New York Post for a wraparound cover page,
`
`which sold out in record timing. See Figure 4. Jesse Angelo, the New York Post’s publisher told
`
`the New York Times, “We knew that this would be a collector’s item….Supreme is such a cool
`
`brand and we have so much affinity, to the design kinship of the logos, to being bold, and never
`
`shy, and New York-based.” The New York Times released its article stating that “A dramatic
`
`cover ad on the New York Post for the street wear company Supreme turned todayʼs tabloid into
`
`an impossible to find commodity.” See Exhibit H.
`
`
`112640089
`
`
`
`5
`
`
`
`

`

`
`
`
`
`Figure 4. New York Post and Opposer’s collaboration
`
`17.
`
`Opposer exclusively sells its goods and accessories under the SUPREME Marks
`
`directly to consumers in numerous countries worldwide through its retail website at
`
`<www.supremenewyork.com>, which was created in September 2006, as well as Opposer’s
`
`retail stores in the U.S., France, Japan, UK, Italy and Germany.
`
`18.
`
`A number of factors contribute to the fame of the SUPREME Marks, including,
`
`among others: (1) the consistent and exclusive of use of the SUPREME Marks over nearly the
`
`past 28 years in the United States and throughout the world, including in connection with
`
`apparel, bags, accessories, skateboard decks, streetwear-related products and other merchandise;
`
`(2) unsolicited media attention about the SUPREME brand; and (3) the worldwide sales of
`
`SUPREME branded goods in the hundreds of millions of U.S. dollars.
`
`19.
`
`By reason of Opposer’s extensive use of the SUPREME Marks, these marks have
`
`become famous and are an asset of substantial value to Opposer as a symbol of Opposer, its
`
`quality goods and services, and goodwill.
`
`APPLICANT’S MARK
`
`20.
`
`Upon information and belief, on April 16, 2021, Applicant filed with the USPTO
`
`Application Serial No. 90/649,775 for Applicant’s Mark, which covers “Puzzles; Air mattress
`
`
`112640089
`
`
`
`6
`
`
`
`

`

`swimming floats for recreational use; Ascenders being mountaineering equipment; Baby
`
`multiple activity toys; Baseball gloves; Christmas tree ornaments and decorations; Educational
`
`toys for teaching math principles to children, namely, manipulative blocks for displaying patterns
`
`and groupings; Electronic animal calls for recreation and hunting activities; Equipment for
`
`skateboard parks for skateboarding, inline skating, and BMX freestyle biking, namely, ramps;
`
`Gymnastics rings; Hoops for rhythmic sportive gymnastics; Pet toys; Physical fitness equipment,
`
`namely, exercise bands; Physical fitness equipment, namely, training bars; Stuffed and plush
`
`toys; Water toys; Yoga blocks made of foam for use in fitness practice” in International Class 28,
`
`based on use in commerce as of January 12, 2021 (collectively, the “Application”). See Exhibit I.
`
`21. Upon information and belief, the SUP element of Applicant’s Mark is identical
`
`and/or highly similar to the SUPREME Marks.
`
`22.
`
`Upon information and belief, Applicant’s Mark is a deliberate effort to associate
`
`Applicant’s goods with Opposer’s well-known SUPREME brand.
`
`23.
`
`The goods covered by the Application are identical and/or closely related to the
`
`goods offered under Opposer’s SUPREME Marks.
`
`24.
`
`Upon information and belief, Applicant’s Mark was not in use in commerce in
`
`connection with all of the goods identified in the Application at the time the Application was
`
`filed under Trademark Act 1(a), 15 U.S.C. § 1051(a).
`
`25.
`
`Upon information and belief, Applicant has never used Applicant’s Mark in U.S.
`
`commerce in connection with all of the goods identified in the Application.
`
`DAMAGE TO OPPOSER
`
`26.
`
`If Applicant were permitted to obtain a registration for Applicant’s Mark, it would
`
`cause damage and injury to Opposer’s business reputation and goodwill and would injure and
`
`impair Opposer’s senior rights in its SUPREME Marks.
`
`
`112640089
`
`
`
`7
`
`
`
`

`

`27.
`
`Applicant’s Mark so resembles Opposer’s SUPREME Marks, as to be likely,
`
`when applied to Applicant’s goods, to cause confusion, or to cause mistake, or deception with
`
`the SUPREME Marks.
`
`28.
`
`The aforesaid confusion, mistake and deception will generate the erroneous
`
`impression that Applicant’s goods originate with Opposer or that Applicant’s goods are
`
`authorized, licensed or endorsed by, or are connected or associated in some way with Opposer or
`
`the SUPREME Marks. Thus, any fault found with Applicant or Applicant’s goods would
`
`adversely reflect upon and damage the SUPREME Marks and the valuable goodwill associated
`
`therewith.
`
`29.
`
`Applicant’s Mark, when applied to Applicant’s goods, will dilute the distinctive
`
`quality of the SUPREME Marks, which have been famous since prior to the filing date of the
`
`Application or any alleged date of use in commerce of the Applicant’s Mark.
`
`30.
`
`For the above reasons, Opposer will be damaged by the registration of
`
`Applicant’s Mark.
`
`31.
`
`Opposer reserves all rights to amend this Notice of Opposition.
`
`
`
`PRAYER FOR RELIEF
`
`WHEREFORE, Opposer prays that this opposition be sustained, and that registration of
`
`Application Serial No. 90/649,775 be denied; and for such other and further relief as the Board
`
`deems just and proper.
`
`Dated: May 9, 2022
`
`
`
`
`
`
`
`
`
`
`
`112640089
`
`
`
`Respectfully submitted,
`
`
`
`
`
`
`Lisa M. Willis
`Assistant General Counsel of
`Chapter 4 Corp. d/b/a Supreme
`
`
`8
`
`
`
`

`

`EXHIBIT A
`EXHIBIT A
`
`

`

`ev States of J
`qvwit GnitedStatesPatentandTradbemarkMerielay
`
`Supreme
`
`Reg. No. 4,554,309
`Registered June 24, 2014
`
`CHAPTER 4 CORP. (NEW YORK CORPORATION), DBA SUPREME
`12] WOOSTER STREET, 2F
`NEW YORK, NY 10012
`
`Int. CL: 28
`
`FOR: SKATEBOARD DECKS, IN CLASS 28 (U.S. CLS. 22, 23, 38 AND 50).
`
`TRADEMARK
`
`PRINCIPAL REGISTER
`
`FIRST USE 3-0-1996; IN COMMERCE3-0-1996.
`
`OWNEROFU.S. REG. NOS. 4,157,110 AND 4.240.456.
`
`THE COLOR(S) RED AND WHITE IS/ARE CLAIMED AS A FEATURE OF THE MARK.
`
`THE MARK CONSISTS OF THE WORD "SUPREME" IN WHITE BLOCK LETTERS AGAINST
`A RED RECTANGULAR BACKGROUND.
`
`SEC. 2(F).
`
`SER. NO. 85-868,116, FILED 3-6-2013.
`
`SHAILA LEWIS, EXAMINING ATTORNEY
`
`
`
`Wtctette K La
`Deputy Director of the United States
`Patent and Trademark Office
`
`

`

`Reg. No. 5,066,670
`
`Registered Oct. 25, 2016
`
`Chapter 4 Corp. (NEW YORK CORPORATION), DBA Supreme ,
`121 Wooster Street, 2F
`New York, NY 10012
`
`Int. Cl.: 18
`
`Trademark
`
`CLASS 18: All-purpose sports and athletic bags; duffel and travel bags; fanny packs and
`waist packs; backpacks; knapsacks; wallets
`
`FIRST USE 4-00-1994; IN COMMERCE 4-00-1994
`
`Principal Register
`
`The color(s) red and white is/are claimed as a feature of the mark.
`
`The mark consists of the word "Supreme" in white letters against a red rectangular
`background.
`
`OWNER OF U.S. REG. NO. 4157110, 4240456
`
`SER. NO. 86-225,910, FILED 03-19-2014
`LINDA B ORNDORFF, EXAMINING ATTORNEY
`
`

`

`ev States of FJ
`GNwit GnitedStatesPatentandTrademarkMertela
`
`Supreme
`
`Reg. No. 4,504,231
`Registered Apr. 1, 2014
`
`CHAPTER 4 CORP. (NEW YORK CORPORATION), DBA SUPREME
`12] WOOSTER STREET, 2F
`NEW YORK, NY 10012
`
`FOR: CLOTHING, NAMELY, SHIRTS, T-SHIRTS, LONG-SLEEVED SHIRTS, UNDER SHIRTS,
`POLO SHIRTS, RUGBY SHIRTS, JERSEYS, DRESS SHIRTS, DENIM JEANS, HOODED
`SWEAT SHIRTS. WARM-UP SUITS. SNOW SUITS, PARKAS. CARDIGANS, PANTS, JEAN
`JACKETS, CARGO PANTS, SHORTS, BOXER SHORTS, TOPS, TANK TOPS, SWEAT SHIRTS,
`SWEAT JACKETS, SWEAT SHORTS, SWEAT PANTS, SWEATERS, VESTS, FLEECE VESTS,
`PULLOVERS,
`JACKETS, COATS, BLAZERS. SUITS, TURTLENECKS, REVERSIBLE
`JACKETS, WIND-RESISTANTJACKETS, SHELL JACKETS, SPORTS JACKETS, GOLF AND
`SKI JACKETS, HEAVY COATS, OVER COATS, TOP COATS, SWIMWEAR, BEACH WEAR,
`VISORS, HEADBANDS, EAR MUFFS, THERMAL UNDERWEAR, LONG UNDERWEAR,
`UNDERCLOTHES, CAPS, HATS, KNIT CAPS, HEADWEAR, SCARVES, BANDANAS, BELTS,
`NECKWEAR, TIES, ROBES, GLOVES, BOOTS, RAINWEAR, FOOTWEAR, SHOES AND
`SNEAKERS, IN CLASS 25 (U.S. CLS. 22 AND 39).
`
`FIRST USE 4-0-1994; IV COMMERCE4-0-1994,
`
`OWNER OFU.S. REG. NOS. 4,157,110 AND 4,240,436.
`
`THE COLOR(S) RED AND WHITE IS/ARE CLAIMED AS A FEATURE OF THE MARK.
`
`THE MARK CONSISTS OF THE WORD "SUPREME"IN WHITE BLOCK LETTERS AGAINST
`A RED RECTANGULAR BACKGROUND.
`
`SER. NO. 85-868,093, FILED 3-6-2013.
`
`SHAILA LEWIS. EXAMINING ATTORNEY
`
`Int. Cl.: 25
`
`TRADEMARK
`
`PRINCIPAL REGISTER
`
`
`
`Wtrctutte. K La
`Deputy Director of the United States
`Patent and Trademark Office
`
`

`

`Reg. No. 5,135,327
`
`Registered Feb. 07, 2017
`
`Chapter 4 Corp. (NEW YORK CORPORATION), DBA Supreme ,
`121 Wooster Street, 2F
`New York, NY 10012
`
`Int. Cl.: 35
`
`Service Mark
`
`Principal Register
`
`CLASS 35: Retail stores, on-line ordering services and on-line retail store services, and retail
`store services available through computer communications, featuring clothing, footwear,
`headwear, bags, wallets and skateboard decks
`
`FIRST USE 4-00-1994; IN COMMERCE 4-00-1994
`
`The color(s) red and white is/are claimed as a feature of the mark.
`
`The mark consists of the word "Supreme" in white block letters against a red rectangular
`background.
`
`OWNER OF U.S. REG. NO. 4157110, 4504231, 4240456
`
`SER. NO. 86-691,492, FILED 07-13-2015
`KAREN DINDAYAL, EXAMINING ATTORNEY
`
`

`

`Reg. No. 5,066,669
`
`Registered Oct. 25, 2016
`
`Chapter 4 Corp. (NEW YORK CORPORATION), DBA Supreme ,
`121 Wooster Street, 2F
`New York, NY 10012
`
`Int. Cl.: 18
`
`Trademark
`
`Principal Register
`
`CLASS 18: All-purpose sports and athletic bags; duffel and travel bags; fanny packs and
`waist packs; backpacks; knapsacks; wallets
`
`FIRST USE 4-00-1994; IN COMMERCE 4-00-1994
`
`THE MARK CONSISTS OF STANDARD CHARACTERS WITHOUT CLAIM TO ANY
`PARTICULAR FONT STYLE, SIZE OR COLOR
`
`OWNER OF U.S. REG. NO. 4157110, 4240456
`
`SER. NO. 86-225,879, FILED 03-19-2014
`LINDA B ORNDORFF, EXAMINING ATTORNEY
`
`

`

`Reg. No. 5,135,326
`
`Registered Feb. 07, 2017
`
`Chapter 4 Corp. (NEW YORK CORPORATION), DBA Supreme ,
`121 Wooster Street, 2F
`New York, NY 10012
`
`Int. Cl.: 35
`
`Service Mark
`
`Principal Register
`
`CLASS 35: Retail stores, on-line ordering services and on-line retail store services, and retail
`store services available through computer communications, featuring clothing, footwear,
`headwear, bags, wallets and skateboard decks
`
`FIRST USE 4-00-1994; IN COMMERCE 4-00-1994
`
`THE MARK CONSISTS OF STANDARD CHARACTERS WITHOUT CLAIM TO ANY
`PARTICULAR FONT STYLE, SIZE OR COLOR
`
`OWNER OF U.S. REG. NO. 4157110, 4504231, 4240456
`
`SER. NO. 86-691,471, FILED 07-13-2015
`KAREN DINDAYAL, EXAMINING ATTORNEY
`
`

`

`yited States of Amery,
`Anited States Patent and Trademark Office
`lly
`
`SUPREME
`
`CHAPTER 4 CORP. (NEW YORK CORPORATION), DBA SUPREME
`Reg. No. 4,240,456
`121 WOOSTER STREET,2F
`.
`.
`Registered Nov. 13, 2012 Newyork, NY 10012
`
`Int. CL: 28
`
`FOR: SKATEBOARD DECKS, IN CLASS 28 (U.S. CLS. 22, 23, 38 AND 50).
`
`TRADEMARK
`
`PRINCIPAL REGISTER
`
`FIRST USE 3-0-1996; IN COMMERCE3-0-1996.
`
`THE MARK CONSISTS OF STANDARD CHARACTERS WITHOUT CLAIM TO ANYPAR-
`TICULAR FONT, STYLE, SIZE, OR COLOR.
`
`SEC. 2(F).
`
`SER. NO. 85-424,722, FILED 9-16-2011.
`
`STEVEN JACKSON, EXAMINING ATTORNEY
`
`
`
`Director of the United Slates Patent and Trademark Office
`
`

`

`ited States of Amery,
`Anited States Patent and Trademark Office
`lly
`
`SUPREME
`
`CHAPTER4 CORP. (NEW YORK CORPORATION), DBA SUPREME
`12] WOOSTER STREET, 2F
`NEWYORK, NY 10012
`
`
`
`FOR: CLOTHING, NAMELY, SHIRTS, T-SHIRTS, LONG-SLEEVED SHIRTS, UNDER SHIRTS,
`POLO SHIRTS, RUGBYSHIRTS, JERSEYS, DRESS SHIRTS, DENIM JEANS, HOODED
`SWEAT SHIRTS, WARM-UP SUITS, SNOWSUITS, PARKAS, CARDIGANS, PANTS, JEAN
`JACKETS, CARGO PANTS, SHORTS, BOXER SHORTS, TOPS, TANK TOPS, SWEAT SHIRTS,
`SWEAT JACKETS, SWEAT SHORTS, SWEAT PANTS, SWEATERS, VESTS, FLEECE VESTS,
`PULLOVERS,
`JACKETS, COATS, BLAZERS, SUITS, TURTLENECKS, REVERSIBLE
`JACKETS, WIND-RESISTANT JACKETS, SITELL JACKETS, SPORTS JACKETS, GOLI AND
`SKI JACKETS, HEAVY COATS, OVER COATS, TOP COATS, SWIMWEAR, BEACHWEAR,
`VISORS, HEADBANDS, EAR MUFFS, THERMAT. UNDERWEAR, LONG UNDERWEAR,
`UNDERCLOTHES, CAPS, HATS, KNIT CAPS, HEADWEAR, SCARVES, BANDANAS,BELTS,
`NECKWEAR, TIES, ROBES, GLOVES, BOOTS, RAINWEAR, FOOTWEAR, SHOES AND
`SNEAKERS, IN CLASS 25 (U.S. CLS. 22 AND 39).
`
`
`
`TIRST USE 4-0-1994; IN COMMERCE4-0-1994.
`
`THE MARK CONSISTS OF STANDARID CHARACTERS WITHOUT CLAIM TO ANYPAR-
`TICULAR FONT, STYLE, SIZE, OR COLOR.
`
`SER. NO. 85-424,627, FILED 9-16-2011.
`
`STEVEN JACKSON, EXAMINING ATTORNEY
`
`Reg. No. 4,157,110
`Registered June 12, 2012
`
`Int. CL: 25
`
`TRADEMARK
`
`PRINCIPAL REGISTER
`
`
`
`Director of the United Slates Patent and Trademark Office
`
`

`

`Reg. No. 5,763,658
`
`Registered May 28, 2019
`
`Chapter 4 Corp.  (NEW YORK CORPORATION), DBA Supreme
`62 King Street
`New York, NEW YORK 10014
`
`Int. Cl.: 18
`
`Trademark
`
`Principal Register
`
`CLASS 18: Book, carry-on, gym, shoulder and tote bags; satchels; luggage; luggage tags;
`trunks; suitcases; bags sold empty; men's clutches; business card cases; calling and credit card
`cases; key cases; leather key chains; billfolds; umbrellas
`
`FIRST USE 4-00-1994; IN COMMERCE 4-00-1994
`
`The color(s) red and white is/are claimed as a feature of the mark.
`
`The mark consists of the word "Supreme" in white letters against a red rectangular
`background.
`
`OWNER OF U.S. REG. NO. 4157110, 4240456
`
`SER. NO. 86-225,846, FILED 03-19-2014
`
`

`

`Reg. No. 5,775,727
`
`Registered Jun. 11, 2019
`
`Chapter 4 Corp.  (NEW YORK CORPORATION), DBA Supreme
`62 King Street
`New York, NEW YORK 10014
`
`Int. Cl.: 18
`
`Trademark
`
`Principal Register
`
`CLASS 18: Book, carry-on, gym, shoulder and tote bags; satchels; luggage; luggage tags;
`trunks; suitcases; bags sold empty; men's clutches; business card cases; calling and credit card
`cases; key cases; leather key chains; billfolds; umbrellas
`
`FIRST USE 4