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

ESTTA Tracking number: ESTTA1075427

Filing date: 08/17/2020

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 The Entertainment Industry Foundation

Granted to Dateof previous ex-tension

08/16/2020

Address 10880 WILSHIRE BOULEVARD, SUITE 1400LOS ANGELES, CA 90024UNITED STATES

Attorney informa-tion

ANDREW D. PRICEVENABLE LLPP.O. BOX 34385WASHINGTON, DC 20043-9998UNITED STATESPrimary Email: trademarkdocket@venable.comSecondary Email(s): adprice@venable.com, aweinstein@venable.com,cmitros@venable.com, PJWyles@Venable.com2023448156

Docket Number 134235527008

Applicant Information

Application No. 88633617 Publication date 02/18/2020

Opposition FilingDate

08/17/2020 Opposition Peri-od Ends

08/16/2020

Applicant Jaeger, Jacqueline95 SCENIC DRIVEHASTINGS-ON-HUDSON, NY 10706UNITED STATES

Goods/Services Affected by Opposition

Class 036. First Use: 2018/11/30 First Use In Commerce: 2018/11/30All goods and services in the class are opposed, namely: Charitable foundation services,namely,providing fundraising activities, funding, scholarships and/or financial assistance for under-privileged and under served communities to provide hockey sticks; Charitable fundraising

Grounds for Opposition

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

Marks Cited by Opposer as Basis for Opposition

U.S. Registration 3588631 Application Date 02/06/2008

No.

Registration Date 03/10/2009 Foreign PriorityDate

NONE

Word Mark STAND UP TO CANCER

Design Mark

Description ofMark

NONE

Goods/Services Class 036. First use: First Use: 2007/10/00 First Use In Commerce: 2008/05/28

Charitable fund raising services, namely, raising funds for cancer research

U.S. RegistrationNo.

3588836 Application Date 05/21/2008

Registration Date 03/10/2009 Foreign PriorityDate

NONE

Word Mark STAND UPTO CANCER

Design Mark

Description ofMark

The mark consists of Three Arrows Pointing Up followed by the words "STANDUP TO CANCER".

Goods/Services Class 035. First use: First Use: 2007/10/00 First Use In Commerce: 2008/05/28

Product merchandising, namely, to raisefunds for cancer research

Class 036. First use: First Use: 2007/10/00 First Use In Commerce: 2008/05/28

Charitable fund raising services, namely, raising funds for cancer research

U.S. RegistrationNo.

3554072 Application Date 06/04/2008

Registration Date 12/30/2008 Foreign PriorityDate

NONE

Word Mark STAND UP TO CANCER

Design Mark

Description ofMark

The mark consists of Medium red arrow pointing up; followed by a smaller or-angearrow pointing up; followed by a largerblack arrow pointing up; followed bythe words "STAND UP" in black color; followed by the word "TO" in red color;followed by the word "CANCER" in orange color.

Goods/Services Class 036. First use: First Use: 2007/10/00 First Use In Commerce: 2008/05/28

Charitable fund raising services, namely, raising funds for cancer research

U.S. RegistrationNo.

5630550 Application Date 09/20/2017

Registration Date 12/18/2018 Foreign PriorityDate

NONE

Word Mark STAND UP TO CANCER

Design Mark

Description ofMark

NONE

Goods/Services Class 004. First use: First Use: 2017/09/14 First Use In Commerce: 2017/09/14

Candles

Class 009. First use: First Use: 2017/09/14 First Use In Commerce: 2017/09/14

Earphones; cell phone covers

Class 014. First use: First Use: 2017/09/14 First Use In Commerce: 2017/09/14

Rubber wristbands in the nature of a bracelet; keychains; cufflinks; lapel pins;necklaces; bracelets; rings

Class 016. First use: First Use: 2017/09/14 First Use In Commerce: 2017/09/14

Notebooks; pens; stickers; decals; temporary tattoo transfers

Class 018. First use: First Use: 2017/09/14 First Use In Commerce: 2017/09/14

Umbrellas; tote bags; duffel bags; drawstring bags

Class 021. First use: First Use: 2017/09/14 First Use In Commerce: 2017/09/14

Travel mugs; mugs; bottles, sold empty

Class 025. First use: First Use: 2017/09/14 First Use In Commerce: 2017/09/14

T-shirts; shirts; leggings; tank-tops; hats; baseball caps; long-sleeved shirts;short-sleeved shirts; sweatshirts; hooded sweatshirts; polo shirts; jackets; jer-seys; shorts; scarves; ties; socks

Class 027. First use: First Use: 2017/09/14 First Use In Commerce: 2017/09/14

Yoga mats

Class 028. First use: First Use: 2017/09/14 First Use In Commerce: 2017/09/14

Stuffed and plush toys; fitness equipment, namely, straps used for yoga and oth-er fitness activities and for carrying ayoga mat

Class 035. First use: First Use: 2017/09/14 First Use In Commerce: 2017/09/14

Promoting public awareness in the fieldof cancer, cancer research, and cancerprevention and treatment; promoting collaboration within the scientific, researchand medical communities to achieve advances in the field of cancer, cancer re-search, and cancer prevention and treatment; providing an online portal for re-gistration for fundraising events; providing a website featuring information inthefield of volunteer opportunities, namely, information on charitable projects;online retail store services featuring clothing, yoga equipment, home accessor-ies, toys, paper goods, pens, umbrellas, bags, mugs, cell phone accessories,candles, keychains, jewelry and earphones

Class 036. First use: First Use: 2017/09/14 First Use In Commerce: 2017/09/14

Providing grants for research in the field of cancer; charitable fundraising; onlinecharitable fundraising; charitablefundraising to support cancer awareness, can-cer research, and cancer preventionand treatment

Class 041. First use: First Use: 2017/09/14 First Use In Commerce: 2017/09/14

Providing online non-downloadable articles, new stories and reports in the fieldof cancer, cancer research, and cancerprevention and treatment; online elec-tronic newsletters delivered by e-mail in the field of cancer, cancer research, andcancer prevention and treatment; educational services, namely, conductingsummits and conferences in the field of cancer, cancer research, and cancerprevention and treatment; providing information regarding the educational ma-terials and opportunities of others in the field of cancer, cancer research, andcancer prevention and treatment, including links tothe websites associated withthose materials and events; providing online journals, namely, blogs with articlesand news in the field of cancer, cancer research, and cancer prevention andtreatment

Class 042. First use: First Use: 2017/09/14 First Use In Commerce: 2017/09/14

Providing an online searchable databasefeaturing clinical trials in the field ofcancer; providing a website with information in the field of cancer re-search;providing links to the websites of others in the field of cancer research;providing a website featuring on-line non-downloadable software that enablesusers to register for charitable volunteer opportunities

Class 044. First use: First Use: 2017/09/14 First Use In Commerce: 2017/09/14

Providing a website with information inthe field of cancer and cancer preventionand treatment; providing links to thewebsites of others in the field of cancer andcancer prevention and treatment

Attachments STICK UP TO CANCER Opposition Attachment.pdf(2129748 bytes )

Signature /Catherine Mitros/

Name Catherine Mitros

Date 08/17/2020

15107518-v1

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

THE ENTERTAINMENT INDUSTRY )

FOUNDATION )

)

Opposer, )

)

v. ) Opposition No.

) Application Serial No. 88/633,617

JACQUELINE JAEGER )

)

)

Applicant. )

)

Attorney’s Reference: 134235-527008

NOTICE OF OPPOSITION

The application for registration of the trademark STICK UP TO CANCER (“Applicant’s

Mark”) filed on September 27, 2019 by Jacqueline Jaeger (“Applicant”), a US citizen,

Application Serial No. 88/633,617 (“Applicant’s Application”), covers the services: “Charitable

foundation services, namely, providing fundraising activities, funding, scholarships and/or

financial assistance for underprivileged and under served communities to provide hockey sticks;

Charitable fundraising” in Class 36. Applicant’s Application was published for opposition in the

Official Gazette on February 18, 2020.

The Entertainment Industry Foundation (“Opposer”), a California non-profit corporation,

believes that it will be damaged by registration of the Applicant’s Mark and hereby opposes the

same. As grounds for opposition it is alleged that:

1. Opposer is now, and for many years has been, a 501(c)(3) charitable organization

that promotes public awareness of cancer and raises funds to support research in

the cancer field.

2. Opposer is the owner of the US Registration Nos. 3,588,631 (“Opposer’s First

STAND UP TO CANCER Registration”), 3,588,836 (“Opposer’s Second

- 2 - 15107518-v1

STAND UP TO CANCER Registration”), 3,554,072 (“Opposer’s Third STAND

UP TO CANCER Registration”) and 5,630,550 (“Opposer’s Fourth STAND UP

TO CANCER Registration) (together with Opposer’s First STAND UP TO

CANCER Registration, Opposer’s Second STAND UP TO CANCER

Registration and Opposer’s Third STAND UP TO CANCER Registration,

“Opposer’s Registrations”) for the mark STAND UP TO CANCER (“Opposer’s

Mark”). (See Exhibits A, B, C and D).

3. Opposer’s First STAND UP TO CANCER Registration covers the following

services in Class 36: “Charitable fundraising services, namely, raising funds for

cancer research.”

4. Along with other services, Opposer’s Second STAND UP TO CANCER

Registration covers the following services in Class 36: “Charitable fundraising

services, namely, raising funds for cancer research.”

5. Opposer’s Third STAND UP TO CANCER Registration covers the following

services in Class 36: “Charitable fund raising services, namely, raising funds for

cancer research.”

6. Along with other services, Opposer’s Fourth STAND UP TO CANCER

Registration covers the following services in Class 36: “Providing grants for

research in the field of cancer; charitable fundraising; online charitable

fundraising; charitable fundraising to support cancer awareness, cancer research,

and cancer prevention and treatment” (together with the services in Opposer’s

First STAND UP TO CANCER Registration, Opposer’s Second STAND UP TO

CANCER Registration and Opposer’s Third STAND UP CANCER Registration,

“Opposer’s Services”).

- 3 - 15107518-v1

7. On February 6, 2008 Opposer filed Opposer’s First STAND UP TO CANCER

Registration.

8. On May 21, 2008 Opposer filed Opposer’s Second STAND UP TO CANCER

Registration.

9. On June 4, 2008 Opposer filed Opposer’s Third STAND UP TO CANCER

Registration.

10. On September 20, 2017 Opposer filed Opposer’s Fourth STAND UP TO

CANCER Registration.

11. By at least as early as May 28, 2008, Opposer used Opposer’s Mark in connection

with the Class 36 services in Opposer’s First, Second and Third STAND UP TO

CANCER Registrations.

12. By at least as early as September 14, 2017, Opposer used Opposer’s Mark in

connection with the Class 36 services in Opposer’s Fourth STAND UP TO

CANCER Registration.

13. Applicant alleges that it began using Applicant’s Mark in US commerce on

November 30, 2018.

14. On September 27, 2019, Applicant filed Applicant’s Application.

15. Opposer’s first use dates for Opposer’s Services and Opposer’s application filing

dates for Opposer’s Registrations are earlier than any date of first use that may be

relied upon by the Applicant for Applicant’s Mark.

16. Opposer’s Mark and Applicant’s Mark both include the identical phrase “UP TO

CANCER.”

17. The only difference between Opposer’s Mark and Applicant’s Mark are the words

STAND versus STICK.

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18. STAND and STICK are similar in sight, sound, meaning and commercial

impression

19. Applicant’s Services are identical to Opposer’s Services to the extent they both

include charitable fundraising.

20. Consumers are likely to be confused between Applicant’s Mark and Opposer’s

Mark as used on or in connection with the parties’ services.

21. Consumers are likely to be confused and to mistakenly believe that Applicant’s

Services offered under Applicant’s Mark either emanate from or are licensed by,

sponsored by, or associated with Opposer.

22. Consumers are likely to be confused and to mistakenly believe that Opposer’s

Services offered under Opposer’s Mark either emanate from or are licensed by,

sponsored by, or associated with Applicant.

23. Consumers are likely to be confused and to mistake Applicant’s Services offered

under Applicant’s Mark for Opposer’s Services offered under Opposer’s Mark.

24. Consumers are likely to be confused and to mistake Opposer’s Services offered

under Opposer’s Mark for Applicant’s Services offered under Applicant’s Mark.

25. If the Applicant were permitted to use and register Applicant’s Mark for

Applicant’s Services, confusion among consumers resulting in damage and injury

to Opposer would be caused by virtue of the similarity between Applicant’s Mark

and Opposer’s Mark, and the similar nature of the services covered by those

marks. Any defect, objection or fault found with Applicant’s Services would

reflect upon and seriously injure the reputation and value that Opposer has

established under Opposer’s Mark.

- 5 - 15107518-v1

WHEREFORE, Opposer prays that Application Serial No. 88/633,617 be rejected, that

no registration be issued thereon to Applicant, and that this opposition be sustained in favor of

the Opposer.

This Notice of Opposition is submitted together with the statutory filing fee of $400

(Class 36). Opposer is submitting the filing fee via credit card. If for any reason this payment

method is unsuccessful, authorization is granted to charge the filing fee of $400.00 to Deposit

Account No. 22-0261 and notify the undersigned accordingly.

Please conduct all correspondence in this matter with the undersigned at the below

address.

Respectfully submitted,

Date: August 17, 2020 /Andrew D. Price/

Attorneys for Opposer

Andrew D. Price

Catherine Mitros

VENABLE

P.O. Box 34385

Washington, D.C. 20043-9998

Telephone: 202/344-4998

Exhibit D