Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
`ESTTA1289065
`06/02/2023
`
`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
`
`Sun Bum LLC
`
`06/03/2023
`
`444 SOUTH COAST HIGHWAY 101
`ENCINITAS, CA 92024
`UNITED STATES
`
`KARL T. ONDERSMA
`GARDNER, LINN, BURKHART & ONDERSMA LLP
`2900 CHARLEVOIX DRIVE SE
`SUITE 300
`GRAND RAPIDS, MI 49546
`UNITED STATES
`Primary email: ondersma@gardner-linn.com
`Secondary email(s): vredeveld@gardner-linn.com, docketing@gardner-linn.com
`616-975-5500
`
`Docket no.
`
`SUN04 L-121
`
`Applicant information
`
`Application no.
`
`97399476
`
`06/02/2023
`
`Opposition filing
`date
`
`Applicant
`
`Publication date
`
`04/04/2023
`
`Opposition period
`ends
`
`06/03/2023
`
`Follow the Bum LLC
`13325 SHERMAN WAY, UNIT D
`NORTH HOLLYWOOD, CA 91605
`UNITED STATES
`
`Goods/services affected by opposition
`
`Class 035. First Use: None First Use In Commerce: None
`All goods and services in the class are opposed, namely: Retail store services featuring Automotive
`accessories, Clothing and accessories thereof, Collectible goods, Electronics accessories, Eye wear,
`Food and beverage goods, Footwear and accessories thereof, Games, Home goods, Jewelry, Out-
`door goods, Paper goods, Sporting goods, Stationery, Stickers, Toys, Travel goods
`
`Grounds for opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`Marks cited by opposer as basis for opposition
`
`U.S. registration
`
`3990792
`
`Application date
`
`12/04/2009
`
`

`

`no.
`
`Register
`
`Principal
`
`Registration date
`
`07/05/2011
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`TRUST THE BUM
`
`NONE
`
`Class 003. First use: First Use: May 27, 2010 First Use In Commerce: May 27,
`2010
`Sunscreen cream
`Class 016. First use: First Use: Apr 15, 2011 First Use In Commerce: Apr 15,
`2011
`Stickers
`Class 025. First use: First Use: May 27, 2010 First Use In Commerce: May 27,
`2010
`T-shirts
`
`U.S. registration
`no.
`
`4129596
`
`Register
`
`Principal
`
`Registration date
`
`04/17/2012
`
`Application date
`
`01/28/2011
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`TRUST THE BUM
`
`NONE
`
`Class 028. First use: First Use: May 5, 2010 First Use In Commerce: May 5,
`2010
`Flying discs; Footballs; Paddle ball games
`
`U.S. registration
`no.
`
`4012130
`
`Register
`
`Principal
`
`Registration date
`
`08/16/2011
`
`Application date
`
`01/20/2011
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`SUN BUM
`
`NONE
`
`Class 028. First use: First Use: Jan 20, 2011 First Use In Commerce: Jan 20,
`2011
`Flying discs; Footballs; Paddle ball games
`
`U.S. registration
`no.
`
`3572365
`
`Register
`
`Principal
`
`Registration date
`
`02/10/2009
`
`Application date
`
`07/02/2008
`
`Foreign priority
`date
`
`NONE
`
`

`

`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`SUN BUM
`
`NONE
`
`Class 003. First use: First Use: Jan 1, 2008 First Use In Commerce: Jan 1, 2008
`Sunscreen cream
`
`U.S. registration
`no.
`
`4870901
`
`Register
`
`Principal
`
`Registration date
`
`12/15/2015
`
`Application date
`
`12/04/2009
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`SUN BUM
`
`NONE
`
`Class 016. First use: First Use: Feb 1, 2010 First Use In Commerce: Feb 1,
`2010
`Stickers
`Class 025. First use: First Use: Feb 1, 2010 First Use In Commerce: Feb 1,
`2010
`Headwear; T-shirts
`Class 028. First use: First Use: Jan 1, 2010 First Use In Commerce: Jan 1, 2010
`Toy animals
`
`U.S. registration
`no.
`
`4289452
`
`Register
`
`Principal
`
`Registration date
`
`02/12/2013
`
`Application date
`
`07/30/2010
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`SUN BUM
`
`NONE
`
`Class 003. First use: First Use: Jan 1, 2008 First Use In Commerce: Jan 1, 2008
`Non-medicated sun care preparations
`
`U.S. registration
`no.
`
`5032467
`
`Register
`
`Principal
`
`Registration date
`
`08/30/2016
`
`Application date
`
`10/13/2014
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`SUN BUM
`
`NONE
`
`Class 003. First use: First Use: May 19, 2010 First Use In Commerce: May 19,
`2010
`Hair care preparations; Lip balm
`
`

`

`U.S. registration
`no.
`
`5863379
`
`Register
`
`Principal
`
`Registration date
`
`09/17/2019
`
`Application date
`
`07/31/2015
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`SUN BUM
`
`The mark consists of a cartoon drawing of the head of a monkey beneath the
`words "SUN BUM".
`
`Class 003. First use: First Use: May 27, 2010 First Use In Commerce: May 27,
`2010
`Disposable wipes impregnated with cleansing chemicals or compounds for per-
`sonal use; fragrances; non-medicated lip care preparations; lip balm; sun screen
`preparations; antiperspirants and deodorants for personal use; body sprays;
`body and beauty care cosmetics; cosmetic preparations, namely, firming creams
`and lotions; self-tanning preparations; facial moisturizers; hair care preparations;
`suntanning preparations; liquid soap; bar soap; toothpaste
`Class 016. First use: First Use: Dec 19, 2016 First Use In Commerce: Dec 19,
`2016
`Stationery; notebooks; stickers; decals
`Class 018. First use: First Use: May 16, 2017 First Use In Commerce: May 16,
`2017
`All-purpose carrying bags; travel bags; school bags; sport bags; wallets; umbrel-
`las
`Class 020. First use: First Use: Jun 30, 2010 First Use In Commerce: Jun 30,
`2010
`Pillows; accent pillows; plastic key chains; beach chairs; outdoor furniture;
`lounge chairs
`Class 021. First use: First Use: Dec 13, 2018 First Use In Commerce: Dec 13,
`2018
`Hair combs; hairbrushes; beverageware; coffee mugs; dinnerware; plates; cups;
`water bottles sold empty
`Class 024. First use: First Use: Jun 30, 2010 First Use In Commerce: Jun 30,
`2010
`Bath linen; towels; blanket throws; hooded towels; textile wall hangings; blankets
`for outdoor use; cushion covers
`Class 025. First use: First Use: Jun 30, 2010 First Use In Commerce: Jun 30,
`2010
`Clothing, namely, beachwear, beach cover ups, shirts; rash guards; sun protect-
`ive clothing, namely, shirts; hats; wrist bands
`Class 028. First use: First Use: Jun 30, 2010 First Use In Commerce: Jun 30,
`2010
`Toys, namely, action figures, water toys, inflatable toys, stuffed and plush toys;
`balls for sports; flying discs; paddle ball games
`
`U.S. application
`no.
`
`90121281
`
`Application date
`
`08/18/2020
`
`Registration date
`
`NONE
`
`Word mark
`
`Design mark
`
`SUN BUM
`
`Foreign priority
`date
`
`NONE
`
`

`

`Description of
`mark
`
`Goods/services
`
`NONE
`
`Class 003. First use: First Use: None First Use In Commerce: None
`Skin cream; Night cream; Eye cream; Face creams; Non-medicated skin ser-
`ums; Beauty serums; Skin cleansers; Skin lotions; Moisturizing body lotions;
`Skin moisturizer; Skin masks; Non-medicated exfoliating preparations for skin;
`Facial washes; Skin toners; Skin clarifiers; Non-medicated face mists for skin
`care; non-medicated face mask for skin care; Mineral lotions for skin care; Non-
`medicated skin care preparations; Non-medicated skin brightening preparations,
`namely, exfoliating face wash, serum, cream, cleanser
`
`U.S. registration
`no.
`
`6944009
`
`Register
`
`Principal
`
`Registration date
`
`01/03/2023
`
`Application date
`
`10/27/2020
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`SUN BUM
`
`NONE
`
`Class 021. First use: First Use: Nov 18, 2021 First Use In Commerce: Nov 18,
`2021
`Reusable water bottles provided empty
`Class 025. First use: First Use: Nov 18, 2021 First Use In Commerce: Nov 18,
`2021
`Headbands
`
`U.S. application
`no.
`
`90280783
`
`Application date
`
`10/27/2020
`
`Registration date
`
`NONE
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`SUN BUM
`
`The mark consists of a cartoon drawing of the head of a monkey beneath the
`words "SUN BUM".
`
`Class 003. First use: First Use: None First Use In Commerce: None
`Skin cream; Night cream; Eye cream; Face creams; Non-medicated skin ser-
`ums; Beauty serums; Skin cleansers; Skin lotions; Moisturizing body lotions;
`Skin moisturizer; Skin masks; Non-medicated exfoliating preparations for skin;
`Facial washes; Skin toners; Skin clarifiers; Non-medicated face mists for skin
`care; non-medicated face mask for skin care; Mineral lotions for skin care; Non-
`medicated skin care preparations; Non-medicated skin brightening preparations,
`namely, exfoliating face wash, serum, cream, cleanser
`Class 021. First use: First Use: None First Use In Commerce: None
`Reusable water bottles provided empty
`Class 025. First use: First Use: None First Use In Commerce: None
`Headbands
`
`U.S. registration
`no.
`
`4321382
`
`Register
`
`Principal
`
`Application date
`
`07/30/2010
`
`

`

`Registration date
`
`04/16/2013
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`BABY BUM
`
`NONE
`
`Class 003. First use: First Use: Sep 6, 2012 First Use In Commerce: Sep 6,
`2012
`Non-medicated sun care preparations
`
`U.S. registration
`no.
`
`5555990
`
`Register
`
`Principal
`
`Registration date
`
`09/04/2018
`
`Application date
`
`10/13/2014
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`BABY BUM
`
`NONE
`
`Class 003. First use: First Use: Oct 2012 First Use In Commerce: Oct 2012
`Baby bubble bath; Baby hand soap; Baby lotion; Baby shampoo; Body cream;
`Hair care preparations; Lip balm; Sunscreen cream
`Class 024. First use: First Use: Jun 5, 2018 First Use In Commerce: Jun 5, 2018
`Towels
`Class 025. First use: First Use: Sep 14, 2017 First Use In Commerce: Sep 14,
`2017
`Hats; T-shirts; Underclothes; Wraps
`
`U.S. registration
`no.
`
`5555991
`
`Register
`
`Principal
`
`Registration date
`
`09/04/2018
`
`Application date
`
`10/13/2014
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`BABY BUM
`
`NONE
`
`Class 028. First use: First Use: Dec 1, 2017 First Use In Commerce: Dec 1,
`2017
`plastic beach toy items, namely, sand toys, toy pails and toy shovels, and beach
`balls; toy animals
`
`U.S. registration
`no.
`
`6205913
`
`Register
`
`Principal
`
`Registration date
`
`11/24/2020
`
`Word mark
`
`Design mark
`
`BABY BUM
`
`Application date
`
`07/31/2015
`
`Foreign priority
`date
`
`NONE
`
`

`

`Description of
`mark
`
`Goods/services
`
`The mark consists of a cartoon drawing of the head of a monkey beneath the
`words "BABY BUM".
`
`Class 003. First use: First Use: Dec 31, 2017 First Use In Commerce: Dec 31,
`2017
`Baby bubble bath; hair care preparations for children; baby lotion; baby wipes;
`bath oil; sun screen preparations
`Class 020. First use: First Use: Jun 30, 2019 First Use In Commerce: Jun 30,
`2019
`Accent pillows; bedroom furniture
`Class 021. First use: First Use: Jun 30, 2019 First Use In Commerce: Jun 30,
`2019
`Drinking cups for babies and children; hair combs; hairbrushes
`Class 028. First use: First Use: Dec 31, 2017 First Use In Commerce: Dec 31,
`2017
`Toys, namely, action figures, water toys, crib toys, bath toys, inflatable toys,
`stuffed toys; plastic beach toy items, namely, sand toys, toy pails and toy
`shovels, and beach balls; balls for sports
`
`U.S. application/ registration
`no.
`
`Register
`
`Registration date
`
`Mark
`
`NONE
`
`NONE
`
`NONE
`
`TRUST THE BUM
`
`Application date
`
`NONE
`
`Goods/services
`
`online retail store services
`
`U.S. application/ registration
`no.
`
`Register
`
`Registration date
`
`Mark
`
`Goods/services
`
`Attachments
`
`Application date
`
`NONE
`
`NONE
`
`NONE
`
`NONE
`
`TRUST THE BUM
`
`retail store services
`
`Opposition-FOLLOW THE BUM-SUN04L121.pdf(73748 bytes )
`ExhibitA.pdf(5841210 bytes )
`ExhibitB.pdf(1495186 bytes )
`ExhibitC1-C15.pdf(1527537 bytes )
`
`Signature
`
`/Karl T. Ondersma/
`
`Name
`
`Date
`
`KARL T. ONDERSMA
`
`06/02/2023
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`SUN BUM LLC
`
`
`Opposer,
`
`
`
`v.
`
`
`FOLLOW TEH BUM LLC
`
`
`Applicant.
`
`
`
`
`
`)
`)
`)
`) Opposition No. ______________________
`)
`) Mark: FOLLOW THE BUM
`) Serial No.: 97/399,476
`)
`)
`
`NOTICE OF OPPOSITION
`
`Sun Bum LLC (“Opposer”), a Michigan limited liability company having an address of
`
`444 South Coast Highway 101, Encinitas, California 92024, believes it will be damaged by
`
`registration of the mark FOLLOW THE BUM, shown in Application Serial No. 97/399,476, for
`
`the identified retail store services in International Class 035, as published in the Official Gazette
`
`on April 4, 2023. The grounds for this Opposition are set forth below.
`
`
`
`1. Follow the Bum LLC (“Applicant”), upon information and belief, is a California Limited
`
`Liability Company, with an identified address of 13325 Sherman Way, Unit D, North Hollywood,
`
`California 91605.
`
`2. Applicant filed its Application Serial No. 97/399,476 on May 6, 2022 seeking to register
`
`the mark FOLLOW THE BUM for use in connection with “Retail store services featuring
`
`Automotive accessories, Clothing and accessories thereof, Collectible goods, Electronics
`
`accessories, Eye wear, Food and beverage goods, Footwear and accessories thereof, Games, Home
`
`goods, Jewelry, Outdoor goods, Paper goods, Sporting goods, Stationery, Stickers, Toys, Travel
`
`goods”, in Class 035 (“Applicant’s Application”).
`
`

`

`3. Applicant’s Application was filed as an intent to use application under Section 1(b), and
`
`no allegation of use has been filed.
`
`4. Opposer is an international lifestyle brand company that distributes a wide variety of
`
`goods in the United States under various marks, including TRUST THE BUM, SUN BUM and
`
`BABY BUM (Opposer’s Marks), including personal care products, apparel items, sporting goods,
`
`and toys. Opposer, since at least as early as 2008, has been engaged in the manufacture, promotion,
`
`advertising, distribution, sale, and offering for sale of such goods. Opposer’s products are sold
`
`extensively throughout the United States and internationally, and are recognized for their premium
`
`contents, quality and unique lifestyle associations Opposer’s goods have enjoyed extensive sales
`
`and its marks are well known in the United States.
`
`5. Among other channels of trade, Opposer engages in substantial online trade, including
`
`through its own website www.sunbum.com, at which it provides online retail store services in
`
`connection with the mark TRUST THE BUM including at least automotive accessories, clothing
`
`and accessories thereof, collectible goods, games, sporting goods, stickers, toys and travel goods.
`
`Attached hereto as Exhibit A are selected screenshots from Opposer’s website in which such online
`
`retail store services are provided in connection with the mark TRUST THE BUM is used, including
`
`in connection with such goods.
`
`6. Opposer has long used the mark TRUST THE BUM in connection with online retail
`
`store services. Applicant previously operated the website www.trustthebum.com at which it
`
`provided online retail store services in connection with the mark TRUST THE BUM since at least
`
`as early as 2011, with the URL www.trustthebum.com now redirecting to Opposer’s website
`
`www.sunbum.com. Opposer has continuously provided online retail store services since at least
`
`
`
`2
`
`

`

`2011. Attached hereto as Exhibit B are images of Opposer’s retail store at which its retail store
`
`services are provided including in connection with its TRUST THE BUM mark.
`
`7. Opposer additionally operates a retail store in Encinitas, California at which Opposer’s
`
`products are sold in connection with Opposer’s Marks, including the TRUST THE BUM, SUN
`
`BUM and BABY BUM marks. Encinitas is a travel destination, including for surfers and surfing
`
`competitions, and Opposer’s retail store receives visitors from all over the country and world.
`
`Opposer’s retail store has been continuously operated since at least before the May 6, 2022 filing
`
`date of Applicant’s Application such that Opposer has priority over Applicant for Opposer’s retail
`
`store services provided in connection with the mark TRUST THE BUM.
`
`8. In addition to substantial common law rights, Opposer is the owner of all right, title and
`
`interest in federal registrations for the TRUST THE BUM, SUN BUM, and BABY BUM Marks,
`
`including the following:
`
`
`Mark
`TRUST THE
`BUM
`
`TRUST THE
`BUM
`
`
`
`
`Reg. No.
`3,990,792
`
`4,129,596
`
`Reg. Date Goods
`07/05/2011
`(IC 003): Sunscreen cream
`(IC 016): Stickers
`(IC 025): T-shirts
`(IC 028): Flying discs; Footballs; Paddle ball
`games
`
`04/17/2012
`
`Mark
`
`Reg. No.
`
`Reg. Date Goods
`
`SUN BUM
`
`4,012,130
`
`08/16/2011
`
`SUN BUM
`
`3,572,365
`
`02/10/2009
`
`SUN BUM
`
`4,870,901
`
`12/15/2015
`
`SUN BUM
`
`4,289,452
`
`02/12/2013
`
`(IC 028): Flying discs; Footballs; Paddle ball
`games
`(IC 003): Sunscreen cream
`
`(IC 016): Stickers
`(IC 025): Headwear; T-shirts
`(IC 028): Toy animals
`(IC 003): Non-medicated sun care preparations
`
`
`
`3
`
`

`

`SUN BUM
`
`5,032,467
`
`08/30/2016
`
`(IC 003): Hair care preparations; Lip balm
`
`5,863,379
`
`09/17/2019
`
`
`
`SUN BUM
`
`App.No.
`90/121,281
`
`App. Date
`08/18/2020
`
`SUN BUM
`
`6,944,009
`
`01/03/2023
`
`(IC 003): Disposable wipes impregnated with
`cleansing chemicals or compounds for personal
`use; fragrances; non-medicated lip care
`preparations; lip balm; sun screen preparations;
`antiperspirants and deodorants for personal use;
`body sprays; body and beauty care cosmetics;
`cosmetic preparations, namely, firming creams
`and lotions; self-tanning preparations; facial
`moisturizers; hair care preparations; suntanning
`preparations; liquid soap; bar soap; toothpaste
`(IC 016): Stationery; notebooks; stickers; decals
`(IC 018): All-purpose carrying bags; travel bags;
`school bags; sport bags; wallets; umbrellas
`(IC 020): Pillows; accent pillows; plastic key
`chains; beach chairs; outdoor furniture; lounge
`chairs
`(IC 021): Hair combs; hairbrushes; beverageware;
`coffee mugs; dinnerware; plates; cups; water
`bottles sold empty
`(IC024): Bath linen; towels; blanket throws;
`hooded towels; textile wall hangings; blankets for
`outdoor use; cushion covers
`(IC025): Clothing, namely, beachwear, beach
`cover ups, shirts; rash guards; sun protective
`clothing, namely, shirts; hats; wrist bands
`(IC 028): Toys, namely, action figures, water
`toys, inflatable toys, stuffed and plush toys; balls
`for sports; flying discs; paddle ball games
`
`(IC 003): Skin cream; Night cream; Eye cream;
`Face creams; Non-medicated skin serums; Beauty
`serums; Skin cleansers; Skin lotions;
`Moisturizing body lotions; Skin moisturizer; Skin
`masks; Non-medicated exfoliating preparations
`for skin; Facial washes; Skin toners; Skin
`clarifiers; Non-medicated face mists for skin care;
`non-medicated face mask for skin care; Mineral
`lotions for skin care; Non-medicated skin care
`preparations; Non-medicated skin brightening
`preparations, namely, exfoliating face wash,
`serum, cream, cleanser
`(IC 021): Reusable water bottles provided empty
`(IC 025): Headbands
`
`
`
`4
`
`

`

`App.No.
`90/280,783
`
`App. Date
`10/27/2020
`
`
`
`(IC 003): Skin cream; Night cream; Eye cream;
`Face creams; Non-medicated skin serums; Beauty
`serums; Skin cleansers; Skin lotions;
`Moisturizing body lotions; Skin moisturizer; Skin
`masks; Non-medicated exfoliating preparations
`for skin; Facial washes; Skin toners; Skin
`clarifiers; Non-medicated face mists for skin care;
`non-medicated face mask for skin care; Mineral
`lotions for skin care; Non-medicated skin care
`preparations; Non-medicated skin brightening
`preparations, namely, exfoliating face wash,
`serum, cream, cleanser
`(IC 021): Reusable water bottles provided empty
`(IC 025): Headbands
`
`
`
`Mark
`
`Reg. No.
`
`Reg. Date Goods
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`BABY BUM
`
`4,321,382
`
`04/16/2019
`
`(IC 003): Non-medicated sun care preparations.
`
`BABY BUM
`
`5,555,990
`
`09/04/2018
`
`BABY BUM
`
`5,555,991
`
`09/04/2018
`
`6,205,913
`
`11/24/2020
`
`
`
`
`
`
`(IC 003): Baby bubble bath; Baby hand soap;
`Baby lotion; Baby shampoo; Body cream; Hair
`care preparations; Lip balm; Sunscreen cream.
`(IC 024): Towels
`(IC 025): Hats; T-shirts; Underclothes; Wraps
`
`(IC 028): Plastic beach toy items, namely, sand
`toys, toy pails and toy shovels, and beach balls;
`toy animals
`
`(IC 003): Baby bubble bath; hair care
`preparations for children; Baby lotion; baby
`wipes; bath oil; sun screen preparations
`(IC 020): Accent pillows; bedroom furniture
`(IC 021): Drinking cups for babies and children;
`hair combs; hairbrushes
`(IC 028): Toys, namely, action figures, water
`toys, crib toys, bath toys, inflatable toys, stuffed
`toys; plastic beach toy items, namely, sand toys,
`toy pails and toy shovels, and beach balls; balls
`for sports
`
`9. TSDR status record copies of each of the above registrations and pending applications
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`are submitted herewith as Exhibits C1-C15 in the order as listed above.
`
`
`
`5
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`

`

`10. Opposer’s Marks have been validly and continuously used, and have not been
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`abandoned.
`
`11. The Marks are distinctive and valuable assets as symbols of Opposer and its business.
`
`Opposer has developed considerable goodwill through its exclusive and continuous use of the
`
`Marks beginning over fourteen years ago.
`
`12. Opposer has spent substantial funds and resources to both advertise and promote its
`
`goods and services under the Marks. As a result of their long and extensive use, the Marks are
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`extremely well known and highly regarded among consumers, and Opposer has developed
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`substantial goodwill and name recognition in its Marks.
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`13. Moreover, the Marks have been and are marketed together in such a manner as to create
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`public recognition coupled with an association of common origin predicated upon the common
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`family feature “BUM”.
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`14. As a result of the efforts of Opposer and its predecessor-in-interest, the consuming
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`public has become familiar with and identifies the Marks, both individually and as a family of
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`marks, as being associated with a wide variety of care goods.
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`15. Applicant’s Application identifies the mark FOLLOW THE BUM that is substantially
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`similar in at least sound, appearance, and meaning to at least Opposer’s TRUST THE BUM Marks
`
`to thereby create a likelihood of confusion. Applicant’s FOLLOW THE BUM mark and Opposer’s
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`TRUST THE BUM Marks are both three words and both identically use in the same order the last
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`two words “THE BUM”, and the combination with the respective prefix words of “FOLLOW”
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`and “TRUST” result in the their meaning in the context of the marks. The mark FOLLOW THE
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`BUM and the TRUST THE BUM Marks also have significant similarities in their cadence, use,
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`and sound, including resulting from use of the similar meanings of their prefixes and the identical
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`
`
`6
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`

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`use of “THE BUM”. Such similarities cause the mark FOLLOW THE BUM and the TRUST THE
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`BUM Marks to create a similar commercial impression and be confusingly similar. Moreover,
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`Applicant’s Application for the mark FOLLOW THE BUM includes no restriction as to the use of
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`any particular font, style, size or color, whereby Applicant’s mark FOLLOW THE BUM could be
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`used in the same format as Opposer’s TRUST THE BUM Marks if Applicant’s Application is
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`allowed.
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`16. In addition to Opposer’s above noted online retail store services and retail store services
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`provided in connection with the TRUST THE BUM Mark, the Application for the mark FOLLOW
`
`THE BUM identifies goods provided in connection with the applied for retail services that are
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`identical to goods offered by Opposer under the TRUST THE BUM Marks, including apparel
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`items, stickers, games and sporting goods.
`
`17. Opposer’s goods and services promoted and sold under its TRUST THE BUM Marks
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`and Applicant’s services for the sale of similar goods that are intended to be sold and/or offered
`
`under the mark FOLLOW THE BUM are identical and/or substantially similar, which are or are
`
`likely to be offered through the same or overlapping channels of trade to the same or overlapping
`
`classes of purchasers. Such purchasers, prospective purchasers, users, and others are likely to be
`
`confused, mistaken, or deceived into the false belief that Applicant’s goods offered under the mark
`
`FOLLOW THE BUM are in some way sponsored or approved by Opposer, and/or emanate or are
`
`otherwise related to Opposer’s goods offered under Opposer’s TRUST THE BUM, SUN BUM
`
`and BABY BUM Marks, thereby damaging Opposer.
`
`18. Opposer has priority. The applications for both of Opposer’s registered TRUST THE
`
`BUM Marks were filed, issued and used in commerce well before Applicant submitted its
`
`Application to register the mark FOLLOW THE BUM. Likewise, Opposer has used its TRUST
`
`
`
`7
`
`

`

`THE BUM Marks in connection with online retail store services and retail store services well prior
`
`to the May 6, 2022 filing date of Applicant’s Application.
`
`19. Registration of Applicant’s FOLLOW THE BUM mark would be likely to cause
`
`confusion, or mistake, or to deceive as to source at least with respect to Opposer’s use of TRUST
`
`THE BUM in connection with Opposer’s online retail store services and Opposer’s retail store
`
`services, and the registered TRUST THE BUM Marks identified above, within the meaning of
`
`Section 2(d) of the Lanham Act, 15 U.S.C. § 1052(d).
`
`20. If Applicant is granted the registration opposed herein, it would obtain at least a prima
`
`facie exclusive right to use the mark FOLLOW THE BUM for the services identified in
`
`Applicant’s Application, thereby causing damage and injury to Opposer. Any defect, objection, or
`
`fault found with Applicant’s services and goods offered under the mark FOLLOW THE BUM is
`
`likely to: (i) reflect upon Opposer; (ii) expose Opposer to liability; and (iii) injure the goodwill and
`
`the reputation that Opposer has expended considerable costs and efforts to develop and maintain
`
`for its various youth lifestyle apparel and related products and services.
`
`WHEREFORE, Opposer respectfully requests that this Opposition be sustained and that
`
`Application Serial No. 97/399,476 be refused registration in its entirety, and for such other relief
`
`as may be deemed just and proper.
`
`
`
`
`
`Dated: June 2, 2023
`
`
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`8
`
`Respectfully submitted,
`
`
`
`
`
`/Karl T. Ondersma/
`Karl T. Ondersma
`Gardner, Linn, Burkhart & Ondersma LLP
`2900 Charlevoix Drive SE, Suite 300
`Grand Rapids, MI 49546
`(616) 975-5500
`(616) 975-5505 (Fax)
`ondersma@gardner-linn.com
`
`
`

`

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`
`
`EXHIBIT A
`EXHIBIT A
`
`

`

`Cc
`
`@ sunbum.com/pages/about-us
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`ContactLs
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`Find A Store
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`Free Sonny Pool Fioat on all Orders over $125!
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`Lip Care
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`About
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`Discover
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`In 2010 we started making products to protect our friends and families from the sun. Since
`then we've grown and gotten a lot bigger but we haven't changed. Our Cocoa Beach office
`is an old Florida beach house off A1A. Our Moonlight Beach office is in the groovy little
`town of Encinitas California. We play way too much ping peng during work hours. Welisten
`te old albums. We take surf breaks. We bring our dogs and kids to work, We want our lives
`to matter. We make products the way we like them and we hopeyaulike them too.
`
`Trust The Bum =.
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`€-r+e
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`@ sunbum.com
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`We care about the planet. We care about the animals. We care about cur families. So, we continue to look for
`ways to make our procucts withoutstuffthat could hurt any of them.
`
`
`Tb
`MORE ABOUT US
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`Set It & Get It
`Fine what you want, pick a date, and watchas all your
`favorite things magically appear on your doorstep.
`
`=e =
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`Trust The Bum*
`Whatdoes that mean? it means trust us. the ones whe live
`om the beach and meec products that work om even the
`most intense days in the sun. The smple truth is, when you
`make products to protect the ones you love, you make
`‘em better,
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`Mm ~
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`fo
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`_
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`Ce
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`@ sunbum.com/pages/sun-care-products
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`@ Fy & O &
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`cual: nema
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`Sun Care
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`like that.
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`Protecting Our Community
`
`Sun Bum Sun Care products are specifically formulated to help protect
`these of us wholive and love in the sun.
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`Trust The Bum®
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`Original Sunscreen
`It'sthe stuffwe use every day.It's the sunscreen formula
`that started it all. People say it smells like summer®. We
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`_
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`C
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`sé
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`sunbum.com/pages/hair-care-products
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`Centact Us
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`@ wv
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`&#@O 6
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`Q 2A Bea
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`About
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`Discover
`nutrition and hydration for strong, healthy-looking hair.
`
`Trust The Bum®
`
`To us, “Beach Hair’ has never been about a particular season, location or
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`little more natural andalittle more focused on our life and howwe want
`to liveit.
`
`*.
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`Revitalizing
`Our Revitalizing products feature naturally derived
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`Cc
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`@ sunbum.com/products/sonny-black-logo-tee
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`@ ao2
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`Lip Care
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`SonnyBlack Logo Tee
`KKK KA 21 Reviews
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`$24.99
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`Our favorite mascot on our favorite tee,
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`el
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`All of our lifestyle items are final sale.
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`Why We Made This
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`Sonny Black Logo Tee
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`Trust The Bum ®
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`A super soft tee featuring ‘Sonny’ Loga.
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`Super Sof 100% Cotton, Sun Burn Woven Label, Water Based Ink.
`Product of USA
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`@ sunbum.com,/products/bucket-hat
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`Bucket Hat
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`$29.99
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`=
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`Relaxed, comfyfit that's easy to style—whether you re at the beach or on the
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`Free Shipping on orders over $50
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`What Is This?
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`Bucket Hat
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`Classic fit and easy style—no bad (hair) days.
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`100% Cotten
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`Sun Care
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`2;
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`@®oo0ooo0o0o0
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`Original SPF 30 Sunscreen Lotion
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`Why We Made This
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`Original Sunscreen Lotion - SPF 30
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`Trust The Bum ®
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`This maisturizing broad spectrum SPF 30 sunscreen formula will
`protect your skin frorn harmful UVA/UVE rays while enriching your
`skin-with Vitamin E an antiome@ant that helps to neutralize tree radicals,
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`Vegan, Hawaii Act 104 Reef Compliant. Cruelty Free. Gluten Free.
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`&# Os
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`Merch
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`Discover
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`Sun Care
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`Hair Care
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`Skin Care
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`Lip Care
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`
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`Original SPF 30 Sunscreen Lotion
`Www KT 219 Reviews
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`$17.49
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`The sunscreen formula that startedit ail,
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`Boz
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`$11.49
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`Free Shipping on orders over $50
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`Why We Made This
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`What's Inside
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`How To Use
`
`Original Sunscreen Lotion - SPF 30
`
`Trust The Bum ®
`
`This moisturizing broad spectrum SPF 30 sunscreen formula will
`protect your skin from harmful UVA/UVE rays while enriching your
`skin with Vitamin E. an antimadant that helps to neutralize free radicals.
`which are the main cause of premature skin aging.
`
`Vegan. Hawaii Act 104 Reef Compliant. Cruelty Free. Gluten Free,
`Paraten Free Oxybenzone & Octinoxate Free, Broad Spectrum
`Protection, Od Free, PABA Free Water Resistant (20 Minutes)
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`3 In 1 Leave In
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`KK KKH TT Reviews
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`$6.49
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`Our tned and true hair care staple. year after year. Made to detangle, condition
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`Revitalizing 3 In 1 Leave In Conditioner
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`Trust The Bum ®
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`Our 3 tn 1 Leave In Conditioner detangles. conditions. and protects our
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