Notice of Opposition › ttabvue › ttabvue-91242509-OPP-1.pdf · athletic bags, backpacks and...

Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov

ESTTA Tracking number: ESTTA910492

Filing date: 07/19/2018

IN THE UNITED STATES PATENT AND TRADEMARK OFFICEBEFORE 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 Sisco Textiles N.V.

Granted to Dateof previous ex-tension

07/21/2018

Address Kaya W.F.G. (Jombi), Mensing 14Willemstad, 0CURAÃ#AO

Attorney informa-tion

ROCHELLE D ALPERTMorgan, Lewis & Bockius LLPOne Market, Spear Street Tower, 5th Fl.SAN FRANCISCO, CA 94105UNITED STATESEmail: [email protected], [email protected],[email protected], [email protected],[email protected]: 415-442-1326

Applicant Information

Application No 87516423 Publication date 05/22/2018

Opposition FilingDate

07/19/2018 Opposition Peri-od Ends

07/21/2018

Applicant Technical Knockout, Inc.4660 Pine Timbers, Suite 198Houston, TX 77041UNITED STATES

Goods/Services Affected by Opposition

Class 009. First Use: 0 First Use In Commerce: 0All goods and services in the class are opposed, namely: Protective boxing helmets; sunglasses;scales, scales with body mass analyzers;bathroom scales; body fat scales for household use; digitalbathroom scales; weighing scales; weighing equipment, namely, scales and balances; headphones,earbuds, wireless headsets for use with mobile telephones, armbands specifically adapted for per-sonal electronic devices, namely, mobile telephones and MP3 players;electronic publications,namely, exercise manuals and product manuals concerning health, fitness and exercise, all recordedon computer media; mouth guards forathletic use; head guards for sports

Class 018. First Use: 0 First Use In Commerce: 0All goods and services in the class are opposed, namely: Luggage; all purpose sports bags, back-packs and waistpacks

Class 025. First Use: 0 First Use In Commerce: 0All goods and services in the class are opposed, namely: Athletic and exercise sportswear, namely,men's, women's, and children's swimwear, jeans, leather jackets, and collaredsports shirts; Activewear for men and women, namely, boxer shorts, bicycle shorts, gym shorts, pants, pullovers,

http://estta.uspto.gov

shortsleeve shirts, sweatshirts, sweat shorts, sweat pants, sweat suits, t-shirts, tank tops, warm-upsuits; Athletic footwear and headwear

Grounds for Opposition

Priority and likelihood of confusion Trademark Act Section 2(d)

Marks Cited by Opposer as Basis for Opposition

U.S. RegistrationNo.

2204582 Application Date 11/13/1995

Registration Date 11/17/1998 Foreign PriorityDate

NONE

Word Mark O'NEILL

Design Mark

Description ofMark

The mark consists, in part, of a wave of water above the stylized wording of"O'NEILL".

Goods/Services Class 018. First use: First Use: 1997/01/01 First Use In Commerce: 1997/01/01

athletic bags, backpacks and wallets

Class 025. First use: First Use: 1997/01/01 First Use In Commerce: 1997/01/01

wetsuits, hoods for water sports, wearing apparel, namely, shirts, pants, shorts,jackets, hats, caps and skiwear, namely, pants, jackets [, and gloves ]




08/09/2011

Word Mark NONE

Design Mark

Description ofMark

The mark consists of a design of a man on a surfboard with both arms raised upwithin two stylized waves.

Goods/Services Class 003. First use: First Use: 0 First Use In Commerce: 0

Substances for laundry use, namely, laundry detergent and laundry soap; clean-ing, polishing, scouring and abrasive preparations; perfumery; essential oils;cosmetics; dentifrices; cosmetic suntan oils and cosmetic suntan creams

Class 009. First use: First Use: 0 First Use In Commerce: 0

Apparatus for recording, transmitting and or reproduction of sound or images;magnetic recording media, namely, video cassettes, audio CDs, CD-ROMs, CD-Is, laser, optical disks and CDs for photographs featuring information regardingsporting events; sound recording disks featuring information regarding sportingevents; automatic vending machines and mechanisms for coin-operated appar-atus; cash registers, calculating machines, data processing and computer equip-ment; fire-extinguishers; sunglasses; spectacles; spectacle frames and ac-cessories, namely, lenses for sunglasses, spectacle cords and cases; divingsuits; diving goggles and masks for underwater sports; underwater breathing ap-paratus;protective clothing for aquatic pursuits, namely, diving suits; protectivehelmets; gloves for protection against accidents; diving gloves; emergency life-saving and teaching apparatus, namely, lifejackets


Precious metals and their alloys and goods in precious metals or coated there-with, namely, watches and key rings; jewelry; precious stones; horological andchronometric instruments; clocks, watches


Paper and goods made from paper, namely, stickers; bookbinding material; pho-tographs; stationery; adhesives for stationery or household purposes; paintbrushes; plastic materials for packaging, namely, plastic bags; printers' type;printing blocks; books in the field of surfing,watersports and skiing; newspapers;time planners; calendars; posters; writing pads; note books; pencils; pens; pencases; printed matter, namely, advertising materials


Leather and imitation leather and goodsmade thereof, namely, luggage, hand-bags, purses, and wallets; bags, namely, backpacks, duffel bags, fanny packs,athletic bags, shoulder bags, handbags, book bags and shopping bags of leath-

er, imitation leather and textile; suitcases; travel bags; sports bags; beach bags;bananapouches; rucksacks; umbrellas and parasols; pocket wallets and purses;animal skins and hides; trunks; walking sticks; whips and saddlery


Clothing, namely, shirts, t-shirts, pants, jackets, skirts, shorts, board shorts,swimwear, swimming trunks, swimsuits,sweatshirts, sweaters, socks, scarves;footwear; snow boots; sports shoes; leisure shoes; booties for water sports; ori-ental slippers; slippers; sandals; headgear, namely, hoods, caps, cap peaks andhats; skiwear, namely, coats, jackets, pants, gloves and boots; wetsuits, drysuits, wetsuit boots and gloves for surfing, windsurfing and water skiing, as wel-las for other water sports; rash guards


Surfboards and accessories therefor, namely, sails, sail battens, tensioning ap-paratus for sails, sail bags designed for surfboard sails and surfboards, mastsand mast feet for sailboards, booms for sailboards, surfboard leeboards, surf-boards leashes, surfboard fins and bags forsurfboard fins, trapezes for sail-boards, trapeze hooks for sailboards, trapeze lines for sailboards, trapeze clipsfor sailboards, transport bags for surfboards, surfboard bags


Retail store services and computerized on-line ordering services featuring cloth-ing, such as sports and leisure clothing, and equipment for use in water sports,such as surfing; marketing and advertising; business management in support ofthe commercialization of products and services within the framework of "e-commerce"; administrative handling of electronically placed orders; business in-termediary services in trade products, also within the framework of servicesrendered by wholesale companies; logistic consultancy and planning relating tobusiness organization; project development for business organization; businessmanagement consultancy; publicity and sales promotion; organization of exhibi-tions, fairs and other events for commercial or publicity purposes




08/20/2009

Word Mark NONE

Design Mark

Description ofMark

The mark consists of a stylized depiction of a wave.

Goods/Services Class 003. First use: First Use: 0 First Use In Commerce: 0

Substances for laundry use, namely, laundry detergent; cleaning, polishing,scouring and abrasive preparations; [ soaps; perfumery; essential oils; cosmet-ics; dentifrices; sun tanning oils and sun tanning creams ]


[ Apparatus for recording, transmittingand or reproduction of sound or images;]magnetic recording media, namely, video cassettes, audio CDs, CD-ROMs, CD-Is,laser, optical disks and CDs for photographs featuring information regarding

sporting events; sound recording disks featuring information regarding sportingevents; [ automatic vending machines and mechanisms for coin-operated appar-atus; cash registers, calculating machines; fire-extinguishers; ] sunglasses;spectacles, spectacle frames and accessories, namely, lenses for sunglasses,spectacle cords and cases; diving suits; [ diving goggles and masks for under-water sports; ]survival suits, namely, insulated overall wet suits and dry suits fordiving and underwater swimming; [ underwater breathing apparatus; ] protectiveclothing for aquatic pursuits, namely, diving suits; protective helmets; gloves forprotection against accidents; diving gloves; emergency life-saving and teachingapparatus, namely, lifejackets


Precious metals and their alloys and goods in precious metals or coated there-with, namely, jewelry, [ watches ] and keyrings; jewelry; [ precious stones; horo-logical and chronometric instruments; clocks, watches ]


Paper, cardboard and goods made from these materials, namely, stickers; book-binding material; photographs; [ stationery; ] adhesives for stationery or house-hold purposes; [ paint brushes; ] plastic materials for packaging, namely, plasticbags; [ printers' type; ] printing blocks; books in the field of surfing, watersportsand skiing; [ newspapers; day planners; calendars; ] posters; [ writing pads; notebooks; pencils; pens; pen cases]


Leather and imitation leather and goodsmade thereof, namely, luggage, suit-cases, travel bags, shoulder bags, handbags,purses, wallets; bags, namely,backpacks, rucksacks, duffle bags, fanny packs, athletic bags, shoulder bags,handbags, book bags, shopping bags of leather, imitation leather and textile;suitcases; travel bags; sports bags; beach bags; fanny packs; rucksacks [ andshopping bags ] made of leather [ and canvas; umbrellas and parasols; ] pocketwallets and purses; [ animal skins and hides; ] trunks;[ walking sticks; whips andsaddlery ]


Clothing, namely, shirts, t-shirts, pants, jackets, skirts, shorts, board shorts,swimwear, swimming trunks, swimsuits,sweatshirts, sweaters, socks, scarves;belts; footwear; snow boots; sports shoes; leisure shoes; booties for watersports; oriental slippers; slippers; sandals; headgear, namely, hoods, caps, cappeaks and hats; sports and leisure wear, namely, wetsuits, dry suits, gloves,wetsuit boots, and skiwear, namely, coats, jackets, pants, gloves and boots;clothingfor surfing, windsurfing and water skiing, namely, wetsuits, dry suits,wetsuitboots and gloves; rash guards


Surfboards and accessories therefor, namely, [ sails, sail battens, tensioning ap-paratus for sails, sail bags designed for surfboard sails and surfboards, masts,mast feet, booms, ] fins, [ fin cases, trapezes, surfboard leeboards, ] surfboardleashes, [ trapeze hooks, trapeze lines, trapeze clips, transport bags especiallydesigned for surfboards and surfboard bags designed for surfboard sails andsurfboards; Games and playthings, namely, playing cards ]


Retail store services and computerized on-line ordering services featuring cloth-ing, such as sports and leisure clothing, and equipment for use in water sports,such as surfing; marketing and advertising; business management in support ofthe commercialization of products and services within the framework of "e-commerce"; administrative handling of electronically placed orders; business in-termediary services in trade products, also within the framework of servicesrendered by wholesale companies; logistic consultancy and planning relating tobusiness organization; project development for business organization; businessmanagement consultancy; publicity and sales promotion; organization of exhibi-

tions, fairs and other events for commercial or publicity purposes

U.S. Application/ Registra-tion No.

NONE Application Date NONE

Registration Date NONE

Word Mark Wave Design Marks as set forth in the attached Notice of Opposition.

Goods/Services As specified in the attached Notice of Opposition.

Attachments 75977757#TMSN.png( bytes )79109078#TMSN.png( bytes )79090990#TMSN.png( bytes )Notice of Opposition and Exs. A-C.pdf(688104 bytes )

Signature /RDA/

Name ROCHELLE D ALPERT

Date 07/19/2018

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

In the matter of Application Serial No. 87/516,423 Filed July 5, 2017

Published in Official Gazette May 22, 2018 for a stylized “T”

Sisco Textiles N.V.

Opposer, v. Technical Knockout, Inc.

Applicant.

Opposition No.:

NOTICE OF OPPOSITION

Sisco Textiles N.V., a Curaçao corporation, having its principal place of business at Kaya

W.F.G. (Jombi), Mensing 14, Willemstad, Curaçao, believes that it will be damaged by the

application filed by Technical Knockout, Inc. (“Applicant”) to register the so-called stylized “T”

designation (shown below), Serial No. 87/516,423, for the goods identified in International

Classes 9, 18 and 25 and hereby opposes the same.

As grounds for the opposition, Opposer alleges as follows:

Opposer’s Trademark Rights

1. Opposer Sisco Textiles N.V., directly and through its predecessors and licensees

in interest (collectively, “Opposer”), has developed, marketed and sold apparel, swimwear,

2

wetsuits and other athletic gear, accessories and footwear, and sponsored athletic events,

including surfing events, under distinctive wave designs.

2. Opposer owns and has long used in interstate and foreign commerce, wave design

marks (collectively “Wave Design Marks”), in connection with apparel, swimwear, wetsuits,

athletic gear, footwear and/or retail store services, and online retail store services featuring such

goods and services. Opposer has been using the Wave Design Marks in the United States for

decades for these goods and services. Opposer also has long used the Wave Design Marks in

connection with surfing, athletic and other sporting and entertainment events. Variations of

Opposer’s Wave Design Marks include the following:

3. Opposer has expended substantial time, effort and money marketing and

promoting the products and services it offers under the Wave Design Marks, including for

apparel, athletic gear, and footwear, and retail and online retail services.

4. Products offered under Opposer’s Wave Design Marks are widely distributed,

sold and promoted in the United States. Further, Opposer uses the Wave Design Marks for its

retail store services and its online retail store services, including on www.oneill.com, and on its

social networking sites, its website and its blog.

5. Opposer’s Wave Design Marks symbolize the extensive goodwill and consumer

recognition that Opposer has established through substantial expenditures of time, effort and

other resources in advertising and promoting the goods and services Opposer offers and provides

under the Wave Design Marks.

3

6. Opposer’s Wave Design Marks have become distinctive and exclusively

associated with Opposer, and its quality products and services.

7. Opposer owns a valid, subsisting, uncancelled and unrevoked federal trademark

registration for its O’NEILL and wave design mark, Registration No. 2,204,582, for “athletic

bags, backpacks and wallets” in International Class 18 and “wetsuits, hoods for water sports,

wearing apparel, namely, shirts, pants, shorts, jackets, hats, caps and skiwear, namely, pants,

jackets” in International Class 25. Opposer’s O’NEILL and wave design mark was first used in

commerce at least as early as January 1, 1997, registered on November 17, 1998, and became

incontestable through its use for over five consecutive years and the filing, acceptance and

acknowledgement of its Section 8 and 15 affidavits. A true and correct copy of the TSDR and

Assignment Status printout for this mark from the USPTO website is attached hereto as

Exhibit A.


registration for a wave design mark, Registration No. 4,348,476, which was filed on August 19,

2011 and registered on June 11, 2013 for a variety of products and services, specifically

swimwear, shirts, hats, jackets, sweatshirts and footwear. A true and correct copy of the TSDR

and Assignment Status printout for this mark from the USPTO website is attached hereto as

Exhibit B.


registration for a wave design mark, Registration No. 4,085,739, which was filed on February 19,

2010 and registered on January 17, 2012, for products and services, specifically sunglasses,

luggage, backpacks, swimwear, shirts, hats, jackets, sweatshirts and footwear. A true and correct

copy of the TSDR and Assignment Status printout for this mark from the USPTO website is

4

attached hereto as Exhibit C.

Applicant’s Trademark Application

10. On July 5, 2017, well after Opposer commenced use and/or obtained registrations

for variations of the Wave Design Marks in the United States, Applicant filed an application for

the opposed designation, Serial No. 87/516,423, with the design showing a stylized wave design

that Applicant identifies as a stylized letter “T”. The opposed application covers “Protective

boxing helmets; sunglasses; scales, scales with body mass analyzers; bathroom scales; body fat

scales for household use; digital bathroom scales; weighing scales; weighing equipment, namely,

scales and balances; headphones, earbuds, wireless headsets for use with mobile telephones,

armbands specifically adapted for personal electronic devices, namely, mobile telephones and

MP3 players; electronic publications, namely, exercise manuals and product manuals concerning

health, fitness and exercise, all recorded on computer media; mouth guards for athletic use; head

guards for sports” in Class 9, “Luggage; all purpose sports bags, backpacks and waistpacks” in

Class 18, and “Athletic and exercise sportswear, namely, men's, women's, and children's

swimwear, jeans, leather jackets, and collared sports shirts; Active wear for men and women,

namely, boxer shorts, bicycle shorts, gym shorts, pants, pullovers, short sleeve shirts, sweatshirts,

sweat shorts, sweat pants, sweat suits, t-shirts, tank tops, warm-up suits; Athletic footwear and

headwear” in Class 25, along with goods and services in Classes 5, 16, 21, 27, 28, 32, 41 and 44.

The opposed application is comprised of a stylized wave design that is highly similar to

Opposer’s well-known and distinctive wave designs without authorization from Opposer.

11. This application was filed decades after Opposer commenced use of the Wave

Design Marks for a wide range of products and services, including but not limited to, the same

types of products on which Applicant intends to use its applied-for designation, as well as retail

5

services related to the products on which Applicant intends to use its applied-for designation.

The Opposed Application was filed well after certain of the Wave Design Marks had been

federally registered and/or well after Opposer commenced use and developed considerable

goodwill and recognition for the Wave Design Marks.

12. Based on the goods for which Applicant seeks to register the applied-for

designation, Applicant’s goods will be competitive with or directly related to the products and

services Opposer has long offered and sold under the Wave Design Marks.

13. On information and belief, based on the goods for which Applicant seeks to

register the applied-for designation, the goods Applicant intends to offer under the applied-for

designation will be sold and/or are likely to be sold or offered for sale through the same or

overlapping channels of trade and/or in the same geographic locations, will be used and/or are

likely to be used by the same or overlapping end users, and will be used and/or are likely to be

directed to the same or overlapping type of customers to whom Opposer markets, promotes and

sells its products and services under the Wave Design Marks.

14. Applicant’s opposed, applied-for designation featuring a wave design, is similar

in sight and overall commercial impression to Opposer’s Wave Design Marks, which suggests an

affiliation, association or sponsorship between Applicant and Opposer when there is none, and

creates a likelihood of consumer confusion.

FIRST CAUSE OF ACTION (Likelihood of Confusion)

15. Opposer incorporates by reference and re-alleges as though fully set forth herein

the allegations of paragraphs 1 through 14 of this Notice of Opposition.

16. The products set forth in the opposed application in Classes 9, 18 and 25 on their

face overlap with and are directly related to the products and services Opposer has offered and

6

provided using the Wave Design Marks. Further, on information and belief, the products listed

in the application in Classes 9, 18 and 25 will be sold and/or are likely to be sold or offered for

sale through the same or overlapping channels of trade and/or in the same geographic locations,

will be used and/or are likely to be used by the same or overlapping users, and will be used

and/or are likely to be directed to the same or overlapping type of customers to whom Opposer

markets, promotes and sells its products and offers its services using the Wave Design Marks.

17. The opposed, applied-for designation is substantially similar in terms of sight, and

overall commercial impression to Opposer’s Wave Design Marks, and thereby is confusingly

similar to Opposer’s Wave Design Marks.

18. The designation covered by the opposed application is likely to cause confusion,

or to cause mistake or disparage or deceive by falsely suggesting a connection with Opposer and

the products and services for which Opposer uses the Wave Design Marks, when there is no such

connection.

19. Opposer believes it will be damaged by registration of the applied-for designation

for the goods identified in Classes 9, 18 and 25 in violation of Sections 2(d) of the Lanham Act,

15 U.S.C. § 1052(d). Unless Applicant’s application is denied for the goods in these classes,

Applicant will unjustifiably reap the benefits of the goodwill attached to Opposer, the Wave

Design Marks and the products and services for which the Wave Design Marks are used, and

Opposer will suffer irreparable damage and injury as a result of the confusion that is likely to

arise from the registration of the opposed application.

WHEREFORE, Opposer prays that Application Serial No. 87/516,423 be rejected for the

goods identified in Classes 9, 18 and 25, that no registration be issued thereon to Applicant for

such goods, and that this opposition be sustained in favor of Opposer.

7

Date: July 19, 2018 Respectfully submitted,

By: /s/ Rochelle D. Alpert Rochelle D. Alpert Attorney for Opposer, Sisco Textiles N.V. Rochelle D. Alpert Sharon R. Smith Seth A. Rappaport Morgan, Lewis & Bockius, LLP One Market, Spear Street Tower San Francisco, CA 94105 Telephone: (415) 442-1326 Facsimile: (415) 442-1001 Email: [email protected]

[email protected] [email protected]

EXHIBIT A

STATUS DOCUMENTS MAINTENANCE Back to Search Print

TSDR now includes a Post Registration Maintenance Tab. When viewing a Registered mark, users will now find a new 3rd tab providing Post Registration information next to the "Status" and "Document" tabs, below the search text box. The tab will not appear if the mark is not registered.

Generated on: This page was generated by TSDR on 2018-07-19 12:51:15 EDT

Mark: O'NEILL

US Serial Number: 75977757 Application Filing Date: Nov.

US Registration Number: 2204582 Registration Date: Nov.

Register: Principal

Mark Type: Trademark

TM5 Common Status Descriptor:

LIVE/REGISTRATION/Issued and Active

The trademark application has been registe

Status: The registration has been renewed.

Status Date: Mar. 23, 2009

Publication Date: Aug. 06, 1996 Notice of Allowance Date: Feb.

Mark Information

Related Properties Information

Goods and Services

Mark Literal Elements: O'NEILL

Standard Character Claim: No

Mark Drawing Type: 3 - AN ILLUSTRATION DRAWING WHICH INCLUDES WORD(S)/ LETTER(S)/NUMBER(

Description of Mark: The mark consists, in part, of a wave of water above the stylized wording of "O'NEILL".

Design Search Code(s): 01.15.13 - Waves, single; Ripple (single wave)

Claimed Ownership of US Registrations:

1069298, 1183040, 1339268, 1367364, 1737412 and others

Child Of: 75019110

7/19/2018http://tsdr.uspto.gov/

Page 1 of 3Trademark Status & Document Retrieval

Basis Information (Case Level)

Current Owner(s) Information

Attorney/Correspondence Information

Note:The following symbols indicate that the registrant/owner has amended the goods/services:

• Brackets [..] indicate deleted goods/services;• Double parenthesis ((..)) identify any goods/services not claimed in a Section 15 affidavit of incontestability; and• Asterisks *..* identify additional (new) wording in the goods/services.

For: athletic bags, backpacks and wallets

International Class(es): 018 - Primary Class U.S Class(es): 001,

Class Status: ACTIVE

Basis: 1(a)

First Use: Jan. 01, 1997 Use in Commerce: Jan.

For: wetsuits, hoods for water sports, wearing apparel, namely, shirts, pants, shorts, jackets, haand gloves ]



Basis: 1(a)

First Use: Jan. 01, 1997 Use in Commerce: Jan.

Filed Use: No Currently Use: Yes

Filed ITU: Yes Currently ITU: No

Filed 44D: No Currently 44D: No

Filed 44E: No Currently 44E: No

Filed 66A: No Currently 66A: No

Filed No Basis: No Currently No Basis: No

Owner Name: SISCO TEXTILES NV

Owner Address: Kaya W.F.G. (Jombi) Mensing 14Willemstad CURACAO

Legal Entity Type: CORPORATION State or Country Where Organized:

No P

Attorney of Record

Attorney Name: Rochelle D. Alpert Docket Number: 0677



Prosecution History

Maintenance Filings or Post Registration Information

TM Staff and Location Information

Assignment Abstract Of Title Information - Click to Load

Attorney Primary Email Address:

[email protected] Attorney Email Authorized: Yes

Correspondent

Correspondent Name/Address:

Rochelle D. AlpertMorgan, Lewis & Bockius LLPOne Market, Spear Street TowerSan Francisco, CALIFORNIA UNITED STATES 94105

Phone: 415-442-1326 Fax: 415-4

Correspondent e-mail: [email protected] Correspondent e-mail Authorized:

Yes

Domestic Representative - Not Found

Affidavit of Continued Use: Section 8 - Accepted

Affidavit of Incontestability: Section 15 - Accepted

Renewal Date: Nov. 17, 2008

TM Staff Information - None

File Location

Current Location: POST REGISTRATION Date in Location: Mar.

Proceedings - Click to Load



United States Patent and Trademark Office Home|Site Index|Search|Guides|Contacts|eBusiness|eBiz

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Assignments on the Web > Trademark Query

Trademark Assignment Abstract of Title

Total Assignments: 1

Serial #: 75977757 Filing Dt: 11/13/1995 Reg #: 2204582 Reg. Dt: 11/17/1998

Registrant: O'NEILL, INC.

Mark: O'NEILL

Assignment: 1

Reel/Frame: 3858/0890 Recorded: 09/24/2008 Pages: 55

Conveyance: ASSIGNS THE ENTIRE INTEREST

Assignor: O'NEILL, INC. Exec Dt: 07/06/2007

Entity Type: CORPORATION

Citizenship: NONE

Assignee: SISCO TEXTILES NV

KAYA W.F.G. (JOMBI), MENSING 14, WILLEMSTAD

CURACO, NETHERLANDS ANTILLES

Entity Type: CORPORATION

Citizenship: NONE

Correspondent: DIANE MASON/MORGAN, LEWIS & BOCKIUS LLP

ONE MARKET, SPEAR STREET TOWER

SAN FRANCISCO, CA 94105

Domestic rep: DIANE J. MASON

ONE MARKET STREET, SPEAR STREET TOWER

MORGAN, LEWIS & BOCKIUS LLP

SAN FRANCISCO, CA 94105

Search Results as of: 07/19/2018 12:51 PMIf you have any comments or questions concerning the data displayed, contact PRD / Assignments at 571-272-3350 . v.2.6

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7/19/2018http://assignments.uspto.gov/assignments/q?db=tm&qt=sno&reel=&frame=&sno=75977757

Page 1 of 1USPTO Assignments on the Web

EXHIBIT B




Mark:

US Serial Number: 79109078 Application Filing Date: Aug.

US Registration Number: 4348476 Registration Date: Jun.

Register: Principal

Mark Type: Trademark, Service Mark




Status: Registered. The registration date is used to determine when post-registration maintenance

Status Date: Jun. 11, 2013

Publication Date: Mar. 26, 2013

Mark Information

Mark Literal Elements: None


Mark Drawing Type: 2 - AN ILLUSTRATION DRAWING WITHOUT ANY WORDS(S)/ LETTER(S)/NUMBER(S)

Description of Mark: The mark consists of a design of a man on a surfboard with both arms raised up within two

Color(s) Claimed: Color is not claimed as a feature of the mark.

Design Search Code(s): 02.01.32 - Astronauts (men); Monocles (men wearing); Men, other, including frogmen, memonocles; Frogmen 02.09.19 - Diving, humans; Humans, including men, women and children, depicted playinggames or sports, humans




Goods and Services

06.03.03 - Ripples (multiple waves); Ocean; Waves, open sea (multiple waves) 21.03.27 - Body boards; Surfboards; Snowboards

International Registration Number:

1106580

International Registration Date:

Aug. 19, 2011


1367364



For: Substances for laundry use, namely, laundry detergent and laundry soap; cleaning, polishperfumery; essential oils; cosmetics; dentifrices; cosmetic suntan oils and cosmetic suntan



Basis: 66(a)

For: Apparatus for recording, transmitting and or reproduction of sound or images; magnetic reCDs, CD-ROMs, CD-Is, laser, optical disks and CDs for photographs featuring informationdisks featuring information regarding sporting events; automatic vending machines and meregisters, calculating machines, data processing and computer equipment; fire-extinguisheand accessories, namely, lenses for sunglasses, spectacle cords and cases; diving suits; dsports; underwater breathing apparatus;protective clothing for aquatic pursuits, namely, diprotection against accidents; diving gloves; emergency life-saving and teaching apparatus



Basis: 66(a)

For: Precious metals and their alloys and goods in precious metals or coated therewith, namelystones; horological and chronometric instruments; clocks, watches



Basis: 66(a)

For:



Paper and goods made from paper, namely, stickers; bookbinding material; photographs; household purposes; paint brushes; plastic materials for packaging, namely, plastic bags; field of surfing, watersports and skiing; newspapers; time planners; calendars; posters; wricases; printed matter, namely, advertising materials



Basis: 66(a)

For: Leather and imitation leather and goods made thereof, namely, luggage, handbags, purseduffel bags, fanny packs, athletic bags, shoulder bags, handbags, book bags and shoppinsuitcases; travel bags; sports bags; beach bags; banana pouches; rucksacks; umbrellas aanimal skins and hides; trunks; walking sticks; whips and saddlery



Basis: 66(a)

For: Clothing, namely, shirts, t-shirts, pants, jackets, skirts, shorts, board shorts, swimwear, swsweaters, socks, scarves; footwear; snow boots; sports shoes; leisure shoes; booties for wsandals; headgear, namely, hoods, caps, cap peaks and hats; skiwear, namely, coats, jacsuits, wetsuit boots and gloves for surfing, windsurfing and water skiing, as well as for othe



Basis: 66(a)

For: Surfboards and accessories therefor, namely, sails, sail battens, tensioning apparatus for and surfboards, masts and mast feet for sailboards, booms for sailboards, surfboard leebobags for surfboard fins, trapezes for sailboards, trapeze hooks for sailboards, trapeze linestransport bags for surfboards, surfboard bags



Basis: 66(a)

For: Retail store services and computerized on-line ordering services featuring clothing, such afor use in water sports, such as surfing; marketing and advertising; business managementproducts and services within the framework of "e-commerce"; administrative handling of elintermediary services in trade products, also within the framework of services rendered byand planning relating to business organization; project development for business organizapublicity and sales promotion; organization of exhibitions, fairs and other events for comm



Basis: 66(a)






Prosecution History

International Registration Information (Section 66a)

Filed Use: No Currently Use: No

Filed ITU: No Currently ITU: No



Filed 66A: Yes Currently 66A: Yes


Owner Name: Sisco Textiles N.V.

Owner Address: Kaya W.F.G. (Jombi) Mensing 14Willemstad CuraçaoCURACAO

Legal Entity Type: LIMITED LIABILITY COMPANY State or Country Where Organized:

CUR

Attorney of Record



[email protected] Attorney Email Authorized: No

Correspondent


Rochelle D. AlpertMorgan, Lewis & Bockius LLP1 Market, Spear Street TowerSan Francisco, CALIFORNIA UNITED STATES 94105

Phone: 415.442.1326 Fax: 415.4

Correspondent e-mail: [email protected]@[email protected]

Correspondent e-mail Authorized:

Yes



1106580 International Registration Date:

Aug.





Priority Claimed Flag: Yes Date of Section 67 Priority Claim:

Aug.

Intl. Registration Status: REQUEST FOR EXTENSION OF PROTECTION PROCESSED

Date of International Registration Status:

Mar.

Notification of Designation Date:

Mar. 01, 2012 Date of Automatic Protection:

Sep.

International Registration Renewal Date:

Aug. 19, 2021

First Refusal Flag: Yes


File Location

Current Location: PUBLICATION AND ISSUE SECTION Date in Location: Jun.





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No assignment has been recorded at the USPTO

For Serial Number: 79109078

If you have any comments or questions concerning the data displayed, contact PRD / Assignments at 571-272-3350 . v.2.6Web interface last modified: August 25, 2017 v.2.6




EXHIBIT C




Mark:

US Serial Number: 79090990 Application Filing Date: Feb.

US Registration Number: 4085739 Registration Date: Jan.

Register: Principal

Mark Type: Trademark, Service Mark




Status: Registered. The registration date is used to determine when post-registration maintenance

Status Date: Jan. 17, 2012

Publication Date: Nov. 01, 2011

Mark Information


Mark Literal Elements: None


Mark Drawing Type: 2 - AN ILLUSTRATION DRAWING WITHOUT ANY WORDS(S)/ LETTER(S)/NUMBER(S)

Description of Mark: The mark consists of a stylized depiction of a wave.

Color(s) Claimed: Color is not claimed as a feature of the mark.

Design Search Code(s): 26.17.09 - Bands, curved; Lines, curved; Curved line(s), band(s) or bar(s); Bars, curved


1061053

International Registration Date:

Feb. 19, 2010

2204582



Goods and Services




For: Substances for laundry use, namely, laundry detergent; cleaning, polishing, scouring and aessential oils; cosmetics; dentifrices; sun tanning oils and sun tanning creams ]



Basis: 66(a)

For: [ Apparatus for recording, transmitting and or reproduction of sound or images; ] magnetic audio CDs, CD-ROMs, CD-Is, laser, optical disks and CDs for photographs featuring informrecording disks featuring information regarding sporting events; [ automatic vending machapparatus; cash registers, calculating machines; fire-extinguishers; ] sunglasses; spectaclelenses for sunglasses, spectacle cords and cases; diving suits; [ diving goggles and masksnamely, insulated overall wet suits and dry suits for diving and underwater swimming; [ unclothing for aquatic pursuits, namely, diving suits; protective helmets; gloves for protectionlife-saving and teaching apparatus, namely, lifejackets



Basis: 66(a)

For: Precious metals and their alloys and goods in precious metals or coated therewith, namely[ precious stones; horological and chronometric instruments; clocks, watches ]



Basis: 66(a)

For: Paper, cardboard and goods made from these materials, namely, stickers; bookbinding mafor stationery or household purposes; [ paint brushes; ] plastic materials for packaging, nablocks; books in the field of surfing, watersports and skiing; [ newspapers; day planners; cpencils; pens; pen cases ]



Basis: 66(a)

For:




Leather and imitation leather and goods made thereof, namely, luggage, suitcases, travel wallets; bags, namely, backpacks, rucksacks, duffle bags, fanny packs, athletic bags, shoubags of leather, imitation leather and textile; suitcases; travel bags; sports bags; beach babags ] made of leather [ and canvas; umbrellas and parasols; ] pocket wallets and purses;sticks; whips and saddlery ]



Basis: 66(a)

For: Clothing, namely, shirts, t-shirts, pants, jackets, skirts, shorts, board shorts, swimwear, swsweaters, socks, scarves; belts; footwear; snow boots; sports shoes; leisure shoes; bootiesandals; headgear, namely, hoods, caps, cap peaks and hats; sports and leisure wear, naboots, and skiwear, namely, coats, jackets, pants, gloves and boots; clothing for surfing, wdry suits, wetsuit boots and gloves; rash guards



Basis: 66(a)

For: Surfboards and accessories therefor, namely, [ sails, sail battens, tensioning apparatus foand surfboards, masts, mast feet, booms, ] fins, [ fin cases, trapezes, surfboard leeboardslines, trapeze clips, transport bags especially designed for surfboards and surfboard bags Games and playthings, namely, playing cards ]



Basis: 66(a)

For: Retail store services and computerized on-line ordering services featuring clothing, such afor use in water sports, such as surfing; marketing and advertising; business managementproducts and services within the framework of "e-commerce"; administrative handling of elintermediary services in trade products, also within the framework of services rendered byand planning relating to business organization; project development for business organizapublicity and sales promotion; organization of exhibitions, fairs and other events for comm



Basis: 66(a)

Filed Use: No Currently Use: No

Filed ITU: No Currently ITU: No






Prosecution History

International Registration Information (Section 66a)


Filed 66A: Yes Currently 66A: Yes


Owner Name: Sisco Textiles N.V.

Owner Address: Kaya W.F.G. (Jombi) Mensing 14Willemstad CuraçaoCURACAO

Legal Entity Type: LIMITED LIABILITY COMPANY State or Country Where Organized:

NET

Attorney of Record



[email protected] Attorney Email Authorized: Yes

Correspondent


Rochelle D. AlpertMorgan, Lewis & Bockius LLPOne Market, Spear Street TowerSan Francisco, CALIFORNIA UNITED STATES 94105

Phone: 415.442.1326

Correspondent e-mail: [email protected]@[email protected]

Correspondent e-mail Authorized:

Yes



1061053 International Registration Date:

Feb.

Priority Claimed Flag: Yes Date of Section 67 Priority Claim:

Aug.

Intl. Registration Status: REQUEST FOR EXTENSION OF PROTECTION PROCESSED

Date of International Registration Status:

Jan.

Jan. 06, 2011 Jul. 0





Notification of Designation Date:

Date of Automatic Protection:

International Registration Renewal Date:

Feb. 19, 2020

First Refusal Flag: Yes


File Location

Current Location: TMO LAW OFFICE 113 Date in Location: Feb.





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No assignment has been recorded at the USPTO

For Serial Number: 79090990

If you have any comments or questions concerning the data displayed, contact PRD / Assignments at 571-272-3350 . v.2.6Web interface last modified: August 25, 2017 v.2.6




Notice of Opposition › ttabvue › ttabvue-91242509-OPP-1.pdf · athletic bags, backpacks and...

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Transcript of Notice of Opposition › ttabvue › ttabvue-91242509-OPP-1.pdf · athletic bags, backpacks and...