Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
ESTTA Tracking number: ESTTA979861
Filing date: 06/11/2019
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 Fila Luxembourg S.Ã r.l.
Entity société Ãresponsabilité limitée
Citizenship Luxembourg
Address 26, Boulevard RoyalLuxembourg, L-2449LUXEMBOURG
Attorney informa-tion
Ross Q. PankoArent Fox LLC1717 K Street, NWWashington, DC 20036UNITED [email protected], [email protected], [email protected], [email protected],[email protected]
Applicant Information
Application No 88138565 Publication date 05/14/2019
Opposition FilingDate
06/11/2019 Opposition Peri-od Ends
06/13/2019
Applicant FILA INCORPORATION LIMITEDUNIT 3A 12/F KAISER CENTRE NO. 18CENTRE STREETSAI YING PUN,HONG KONG
Goods/Services Affected by Opposition
Class 032. First Use: 0 First Use In Commerce: 0All goods and services in the class are opposed, namely: Beers; Fruit juice beverages; Non-alcoholicwater-based beverages; Syrups for making beverages; Water beverages
Grounds for Opposition
Priority and likelihood of confusion Trademark Act Section 2(d)
Dilution by blurring Trademark Act Sections 2 and 43(c)
Dilution by tarnishment Trademark Act Sections 2 and 43(c)
Marks Cited by Opposer as Basis for Opposition
U.S. Registration 4245213 Application Date 03/23/2012
No.
Registration Date 11/20/2012 Foreign PriorityDate
NONE
Word Mark FILA
Design Mark
Description ofMark
NONE
Goods/Services Class 025. First use: First Use: 1979/00/00 First Use In Commerce: 1979/00/00
Shirts, t-shirts, yoga shirts, polo shirts, sweatshirts, sweaters, tank tops, coverups, jackets, vests, fleece outerwear, namely, fleece shirts, fleece jackets, fleecewarm up outfits, fleece vests,and fleece pants, coats, pants, yoga pants, capris,sports bras, underwear, shorts, skorts, bathing suits, skirts, dresses, warm-upoutfits, wristbands, headbands, gloves, visors, caps, hats, socks, footwear, flipflops
U.S. RegistrationNo.
3284736 Application Date 11/09/2006
Registration Date 08/28/2007 Foreign PriorityDate
NONE
Word Mark FILA
Design Mark
Description ofMark
NONE
Goods/Services Class 035. First use: First Use: 1991/07/00 First Use In Commerce: 1991/07/00
Retail stores *namely, off-line and online retail stores * featuring clothing, cloth-ing accessories, footwear, headwear, handbags, carry-all bags, all purposesport bags, [watches,] and sun-glasses
U.S. RegistrationNo.
1576379 Application Date 03/21/1988
Registration Date 01/09/1990 Foreign PriorityDate
NONE
Word Mark F
Design Mark
Description ofMark
NONE
Goods/Services Class 018. First use: First Use: 1983/01/00 First Use In Commerce: 1983/01/00
SUITCASES AND LUGGAGE, INCLUDING WARDROBE BAGS, CARRY ONCASES, [ BEAUTY CASES,] OVERNIGHT BAGS, [ GARMENT BAGS FORTRAVEL, TRUNKS FOR TRAVELLING, AND ] ATTACHE CASES; SCHOOL-BOOK BAGS; TOTE BAGS; WALLETS AND BILLFOLDS; PURSES; [ CHECK-BOOK AND PASSPORT COVERS ]
Class 025. First use: First Use: 1982/07/00 First Use In Commerce: 1982/07/00
[ BELTS ]
U.S. RegistrationNo.
5763765 Application Date 09/22/2015
Registration Date 05/28/2019 Foreign PriorityDate
NONE
Word Mark FILA
Design Mark
Description ofMark
The mark consists of the word "FILA" instylized letters.
Goods/Services Class 011. First use: First Use: 2018/06/05 First Use In Commerce: 2018/06/05
Running and walking safety accessories,namely, reflectors
Class 021. First use: First Use: 2019/03/00 First Use In Commerce: 2019/03/00
Water bottles sold empty
U.S. RegistrationNo.
1564119 Application Date 07/13/1987
Registration Date 11/07/1989 Foreign PriorityDate
NONE
Word Mark FILA
Design Mark
Description ofMark
NONE
Goods/Services Class 005. First use: First Use: 1986/00/00 First Use In Commerce: 1986/00/00
[ HIGH-POTENCY VITAMIN AND MINERAL SUPPLEMENTS, ENERGYDRINKS COMPRISED OF VITAMINS AND ENERGY REPLACEMENT DRINKS]
Class 014. First use: First Use: 1984/00/00 First Use In Commerce: 1984/00/00
WRIST WATCHES
Class 025. First use: First Use: 1979/10/00 First Use In Commerce: 1979/10/00
[ SKI UNDERWEAR, ] UNDERPANTS, SHIRTS, POLO SHIRTS, CAPS, INSU-LATING RACING JACKETS, [ STRAIGHT RACE AND GIANT SLALOM OVER-ALLS, ] PULLOVERS, CARDIGANS, JACKETS, TROUSERS, [ CROSS-COUNTRY SKI SALOPETTES, CROSS-COUNTRY SKI OVERALLS, ]SLEEVELESS JACKETS, COATS, GLOVES, [ GAITERS, ] SOCKS, TANK-TOPS, BERMUDA SHORTS, SHORTS, WAISTCOATS, [ SALOPETTES,]BATHING SUITS, SKIRTS, [ BATHING GOWNS, ] SWIMMING SUITS, BIKINIS,PONCHOS, [ BATHING CAPS, OVERALL JACKET HOODS, ] T-SHIRTS,SLEEVELESS PULLOVERS, WARM-UPS, WRIST-BANDS, HEAD BANDS, VI-SORS, [ SUN-BATH SHIRTS,KILTS, ] LADIES DRESSES, [ CULOTTES, ANDTIES ]
Class 028. First use: First Use: 1986/00/00 First Use In Commerce: 1986/10/00
[ GOLF CLUBS, TRAVEL WEIGHTS FOR EXERCISING, HAND-HELD ELAST-IC EXERCISING APPARATUS, JUMP ROPES, AND HAND-HELD EXER-CISING WEIGHTS ]
U.S. RegistrationNo.
2065693 Application Date 06/21/1995
Registration Date 05/27/1997 Foreign PriorityDate
NONE
Word Mark FILA
Design Mark
Description ofMark
NONE
Goods/Services Class 025. First use: First Use: 1979/10/00 First Use In Commerce: 1979/10/00
sweatbands, T-shirts, sweatshirts, hats
U.S. RegistrationNo.
5722517 Application Date 11/03/2014
Registration Date 04/09/2019 Foreign PriorityDate
NONE
Word Mark FILA
Design Mark
Description ofMark
The mark consists of the word "FILA" instylized letters.
Goods/Services Class 028. First use: First Use: 2015/10/01 First Use In Commerce: 2015/10/01
Exercise equipment, namely, stability balls, work-out gloves, waist trimmer exer-cise belts, core-strengthening wheels, resistance bands, flat bands for use instretching and muscle resistance exercises, resistance cords, mats being per-sonal exercise mats, yoga mats, jump ropes, hand grip exercisers for non-medical purposes, exercise bars for pushups and pull-ups, foam rollers, mas-sage balls, ankle and wrist weights, hand weights, weighted gloves, weightedballs, medicine balls, inflatable balls, kettle bells
U.S. RegistrationNo.
1518706 Application Date 10/02/1987
Registration Date 01/03/1989 Foreign PriorityDate
NONE
Word Mark FILA
Design Mark
Description ofMark
THE MARK COMPRISES THE WORD "FILA" IN STYLIZED FORM WITH THETOP OF THE HORIZONTAL LINE OF THE LETTER "F" LINED WITH THECOLOR RED AND THE REMAINDER OF THE LETTERING LINED FOR THECOLOR BLUE.
Goods/Services Class 009. First use: First Use: 0 First Use In Commerce: 0
SUNGLASSES, SPECTACLES [ AND SKI-GOGGLES ]
U.S. RegistrationNo.
1606409 Application Date 03/21/1988
Registration Date 07/17/1990 Foreign PriorityDate
NONE
Word Mark FILA
Design Mark
Description ofMark
NONE
Goods/Services Class 018. First use: First Use: 1982/07/00 First Use In Commerce: 1982/07/00
SUITCASES AND LUGGAGE, INCLUDING WARDROBE BAGS, CARRY-ONCASES, BEAUTY CASES, OVERNIGHT BAGS, GARMENT BAGS FORTRAVEL, TRUNKS FOR TRAVEL AND ATTACHE CASES; SCHOOL BAGS,HANDBAGS, TOTE BAGS, BACKPACKS, AND SHOULDER STRAPS FORPURSES; WALLETS AND BILLFOLDS; PURSES; CHECKBOOK AND PASS-PORT COVER
Class 025. First use: First Use: 1982/07/00 First Use In Commerce: 1982/07/00
BELTS FOR CLOTHING
U.S. RegistrationNo.
1465549 Application Date 05/01/1986
Registration Date 11/17/1987 Foreign PriorityDate
NONE
Word Mark FILA
Design Mark
Description ofMark
NONE
Goods/Services Class 025. First use: First Use: 1983/12/00 First Use In Commerce: 1983/12/00
SPORTS SHOES
Class 028. First use: First Use: 1979/11/00 First Use In Commerce: 1979/11/00
[ TENNIS RACKETS AND TENNIS RACKET COVERS ]
U.S. RegistrationNo.
5681241 Application Date 04/26/2017
Registration Date 02/19/2019 Foreign PriorityDate
NONE
Word Mark FILA ENERGIZED
Design Mark
Description of NONE
Mark
Goods/Services Class 025. First use: First Use: 2014/07/00 First Use In Commerce: 2014/07/00
footwear
U.S. RegistrationNo.
4042315 Application Date 07/10/2007
Registration Date 10/18/2011 Foreign PriorityDate
NONE
Word Mark FILA SPORT
Design Mark
Description ofMark
The mark consists of the stylized word "FILA" in blue with the top line of the let-ter "F" in red and containing the word "SPORT" in white.
Goods/Services Class 025. First use: First Use: 2008/09/00 First Use In Commerce: 2008/09/00
Clothing and Apparel, namely, shirts, sweat-shirts, shorts, pants, outerwear,namely,[ coats,] jackets, [vests, ]fleeces[, skirts, dresses, socks, footwear,headgear, namely, headbands, visors, caps]
U.S. RegistrationNo.
4038772 Application Date 07/10/2007
Registration Date 10/11/2011 Foreign PriorityDate
NONE
Word Mark FILA SPORT
Design Mark
Description ofMark
The mark consists of a stylized word "FILA" in blue with the top line of the letter"F" in red with the word "SPORT" inblue below the word "FILA".
Goods/Services Class 009. First use: First Use: 2008/09/00 First Use In Commerce: 2009/09/00
[Eyewear]
Class 025. First use: First Use: 2008/09/00 First Use In Commerce: 2008/09/00
Clothing and Apparel, namely, shirts, sweat-shirts, shorts, pants, outerwear,namely,[ coats,] jackets,[vests], fleeces[, skirts, dresses, socks, footwear,headgear, namely, headbands, visors, caps]
U.S. RegistrationNo.
2145780 Application Date 08/08/1996
Registration Date 03/24/1998 Foreign PriorityDate
NONE
Word Mark FILA SPORT
Design Mark
Description ofMark
NONE
Goods/Services Class 025. First use: First Use: 1995/07/00 First Use In Commerce: 1995/07/00
clothing, namely, jackets, vests, pants, shirts, [ suits, jeans, Bermudas scarves,]socks, [ underwear,] sweaters,[ fleece, ] gloves, hats,[ raincoats,] outerwearjackets, [ ties,] shirts, trunks, and knits, namely, sweaters, knit shirts, T-shirtsand waistcoats made of knitted fabrics
Attachments 85578817#TMSN.png( bytes )77040704#TMSN.png( bytes )73717779#TMSN.png( bytes )86764639#TMSN.png( bytes )73671362#TMSN.png( bytes )74695788#TMSN.png( bytes )86442929#TMSN.png( bytes )73687524#TMSN.png( bytes )73717778#TMSN.png( bytes )73596258#TMSN.png( bytes )87425841#TMSN.png( bytes )77226166#TMSN.png( bytes )77226178#TMSN.png( bytes )75147234#TMSN.png( bytes )FILA US Notice of Opposition v Fila Incorporation.pdf(3569565 bytes )
Signature /Ross Q. Panko/
Name Ross Q. Panko
Date 06/11/2019
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD In re: Application No. 88/138,565 for the mark FILA filed on October 1, 2018, and published on May 14, 2019. FILA LUXEMBOURG S.A R.L. :
: Opposer :
: Opp. No. ________________ v. : :
FILA INCORPORATION LIMITED, LTD. : :
Applicant : NOTICE OF OPPOSITION
Fila Luxembourg S.á r.l. (“Opposer”), a corporation duly organized and existing under
the laws of Luxembourg and having a principal business address of 26, Boulevard Royal,
Luxembourg L-2449, believes that it will be damaged by the registration on the Principal
Register of the mark FILA (Application Serial No. 88/138,565), owned by Fila Incorporation
Limited, Ltd. (“Applicant”), and hereby opposes the same under the provisions of Section 13 of
the Trademark Act of 1946, 15 U.S.C. § 1063.
As grounds for the opposition, it is alleged that:
1. Opposer is the owner of all right, title, and interest in and to the mark FILA, and a
family of registered and common law trade names, service marks, and trademarks comprised in
whole or in part of the word FILA (collectively, the “FILA Marks”) for, among other things,
clothing, footwear, sporting goods and other products and services.
2. The mark that Applicant seeks to register is nearly identical to the FILA Marks
such that the use and registration thereof is likely to cause confusion, mistake, and deception as
to the source or origin of Applicant’s goods, and will injure and damage Opposer and the
2
goodwill and reputation symbolized by the FILA Marks.
3. The United States Patent and Trademark Office (“USPTO”) has recognized
Opposer’s exclusive rights by issuing numerous registrations for the FILA Marks, including the
following (copies of records from Trademark Electronic Search System are attached as Exhibit
A):
Mark Status Serial.
No.
Application
Date
Registration
No.
Registration
Date
Goods/Services
and
International
Class
FILA Registered 85/578817 03/23/2012 4245213 11/20/2012 Shirts, t-shirts, yoga shirts, polo shirts, sweatshirts, sweaters, tank tops, cover ups, jackets, vests, fleece outerwear, namely, fleece shirts, fleece jackets, fleece warm up outfits, fleece vests, and fleece pants, coats, pants, yoga pants, capris, sports bras, underwear, shorts, skorts, bathing suits, skirts, dresses, warm-up outfits, wristbands, headbands, gloves, visors, caps, hats, socks, footwear, flip flops (Class 25)
FILA Registered 77/040704 11/09/2006 3284736 08/28/2007 Retail stores namely, off-line and online retail stores featuring clothing, clothing
3
accessories, footwear, headwear, handbags, carry-all bags, all purpose sport bags, and sun-glasses (Class 35)
Registered 73/717779 03/21/1988 1576379 01/09/1990 Suitcases and luggage, including wardrobe bags, carry on cases, overnight bags, attache cases; school-book bags; tote bags; wallets and billfolds; purses (Class 18)
Allowed 86/764639 09/22/2015 Running and
walking safety accessories, namely, reflectors (Class 11); Water bottles sold empty (Class 21); Reflective running vests (Class 25)
Registered 73/671362 07/13/1987 1564119 11/07/1989 Wrist watches
(Class 14); Underpants, shirts, polo shirts, caps, insulating racing jackets, pullovers, cardigans, jackets, trousers, sleeveless jackets, coats, gloves, socks, tank-tops, bermuda shorts, shorts, waistcoats, bathing suits, skirts, bathing gowns, swimming suits, bikinis, ponchos, t-shirts,
4
sleeveless pullovers, warm-ups, wrist-bands, head bands, visors, ladies dresses (Class 25)
Registered 74/695788 06/21/1995 2065693 05/27/1997 Sweatbands, t-
shirts, sweatshirts, hats (Class 25)
Allowed 86/442929 11/03/2014 Exercise
equipment, namely, stability balls, work-out gloves, waist trimmer exercise belts, core-strengthening wheels, resistance bands, flat bands for use in stretching and muscle resistance exercises, resistance cords, mats being personal exercise mats, yoga mats, jump ropes, hand grip exercisers for non-medical purposes, exercise bars for pushups and pull-ups, exercise handles for push-ups and pull-ups, foam rollers, massage balls, foot rollers, stretching straps, yoga props being blocks and straps, ankle and wrist weights, walking weights, hand weights, weighted gloves, weighted
5
balls, medicine balls, inflatable balls, ab-sculpting balls, dumbbells, kettle bells, weighted bars, weighted plates and weight benches (Class 28)
Registered 73/687524 10/02/1987 1518706 01/03/1989 Sunglasses,
spectacles and ski-goggles (Class 9)
Registered 73/717778 03/21/1988 1606409 07/17/1990 Suitcases and
luggage, including wardrobe bags, carry-on cases, beauty cases, overnight bags, garment bags for travel, trunks for travel and attache cases; school bags, handbags, tote bags, backpacks, and shoulder straps for purses; wallets and billfolds; purses; checkbook and passport cover (Class 18)
Registered 73/596258 05/01/1986 1465549 11/17/1987 Sports shoes
(Class 25) FILA ENERGIZED
Allowed 87/425841 04/26/2017 Footwear (Class 25)
Registered 77/226166 07/10/2007 4042315 10/18/2011 Clothing and
Apparel, namely, shirts, sweat-shirts, shorts, pants, outerwear, namely, jackets, fleeces (Class 25)
Registered 77/226178 07/10/2007 4038772 10/11/2011 Clothing and Apparel, namely,
6
shirts, sweat-shirts, shorts, pants, outerwear, namely, jackets, fleeces (Class 25)
Registered 75/147234 08/08/1996 2145780 03/24/1998 Clothing, namely, jackets, vests, pants, shirts, socks, sweaters, gloves, hats, outerwear jackets, shirts, trunks, and knits, namely, sweaters, knit shirts, t-shirts and waistcoats made of knitted fabrics (Class 25)
4. Opposer’s registrations are valid and subsisting, and Registration Nos. 1465549,
1518706, 1564119, 1576379, 1606409, 2065693, 2145780, 3284736, 4042315, 4038772 and
4245213 are incontestable. These registrations provide prima facie evidence, and the
incontestable registrations provide conclusive evidence, of Opposer’s ownership of the FILA
Marks, of the validity of the Marks, and of Opposer’s exclusive right to use the Marks in
commerce.
5. Opposer or its predecessor-in-interest adopted and first used the FILA Marks in
the U.S. at least as early as the 1970s, many decades prior to Applicant’s filing date, and prior to
any use by Applicant of the mark it seeks to register.
6. The FILA Marks have been used, advertised, and promoted in interstate
commerce continuously since the 1970s, in connection with a variety of goods including apparel,
footwear, sporting and athletic goods and accessories, exercise equipment, bags and suitcases,
audio equipment, watches, sunglasses and water bottles. Opposer’s goods are offered for sale
under the FILA Marks in more than 50 countries around the world.
7
7. Opposer has expended substantial sums in marketing, advertising, and promoting
the FILA Marks in connection with its products throughout the United States.
8. As a result of such extensive use, advertising, and promotion, the FILA Marks
have become well-known as distinctive indicators of the origin of Opposer’s goods and services,
and the marks have become extremely valuable symbols of Opposer’s goodwill.
9. The FILA Marks have been featured in hundreds of publications, including the
New York Times, Complex Magazine, the Wall Street Journal, and Forbes Magazine. Clothing
featuring the FILA Marks has also been worn and endorsed by countless celebrities and athletes.
10. Additionally, Opposer is widely known through its endorsement of athletes in the
U.S. and abroad, covering a variety of athletic disciplines and fields including tennis, golf,
basketball, bowling and skating, as well as through its sponsorship of athletic events including
tennis tournaments such as the Sony Open in Miami, Florida and the BNP Paribas Open in
Indian Wells, California. Such sponsorships and endorsements elevate consumer awareness of
the FILA Marks and provide brand exposure to a broad range of consumers across all ages and
socio-economic groups.
11. Accordingly, Opposer has enjoyed substantial revenue derived from the sale of
products used and sold under the FILA Marks in the United States.
12. Notwithstanding Opposer’s prior established rights in the FILA Marks, Applicant
filed an application based on intent to use with the USPTO on October 1, 2018, for the mark
FILA (Application Serial No. 88/138,565) for “beers; fruit juice beverages; non-alcoholic water-
based beverages; syrups for making beverages; water beverages” (hereinafter “Applicant’s
Mark”).
13. Applicant’s Mark is nearly identical to Opposer’s FILA Marks.
8
14. Upon information and belief, Applicant knew or had reason to know of Opposer’s
prior rights in the FILA Marks when Applicant filed its application.
15. Opposer is not related to Applicant, nor has Opposer authorized, endorsed, or
approved of the goods Applicant intends to offer under its mark.
Count I - Likelihood of Confusion §2(d)
16. Opposer hereby incorporates by reference the allegations contained in the
foregoing paragraphs.
17. Applicant’s Mark is nearly identical to the FILA Marks such that the use and
registration thereof is likely to cause confusion, mistake, and deception as to the source or origin
of Applicant’s goods and will injure and damage Opposer and the goodwill and reputation
symbolized by the FILA Marks. Applicant’s alleged mark is identical in sound and nearly
identical in appearance and overall commercial impression to Opposer’s FILA Marks.
18. Applicant’s goods are within the zone of Opposer’s natural expansion such that
the public is likely to be confused, to be deceived, and to assume erroneously that Applicant’s
goods are those of Opposer, or that Applicant is in some way connected or affiliated with, or
approved or sponsored by Opposer, all to Opposer’s irreparable damage. Opposer currently sells
a variety of products including water bottles sold empty and expanding into branded goods such
as sports beverage would be a natural extension of Opposer’s prior use of the FILA Marks.
19. Likelihood of confusion is enhanced by the fame of Opposer’s FILA Marks and
by the fact that consumers associate these Marks with goods and services sold, approved, or
endorsed by Opposer.
Count II – Dilution §43(c)
20. Opposer hereby incorporates by reference the allegations contained in the
foregoing paragraphs.
9
21. Opposer’s inherently distinctive FILA Marks have been widely used and
advertised in the United States and internationally for many years.
22. A substantial volume of products have been sold under Opposer’s FILA Marks
throughout the United States and internationally.
23. The extent of consumer recognition of Opposer’s FILA Marks is substantial.
24. Because of the extensive use and advertising of Opposer’s FILA Marks, the
substantial sales of products under the FILA Marks, and the recognition of the FILA Marks by
the consuming public, Opposer’s FILA Marks have become famous as distinctive symbols of
Opposer’s goodwill.
25. Applicant has filed for and is making or intends to make unauthorized use in
commerce of a mark that is nearly identical to one or more of Opposer’s famous FILA Marks.
26. Applicant’s use began or will begin long after Opposer’s FILA Marks became
famous.
27. Applicant’s alleged mark is likely to cause and will cause dilution of the
distinctive qualities of Opposer’s FILA Marks by blurring and tarnishment.
28. Use or registration of Applicant’s alleged mark will lessen the capacity of
Opposer’s famous FILA Marks to identify and distinguish Opposer’s goods and services.
29. Likelihood of dilution is enhance by the fact that Applicant’s alleged mark is
identical in appearance, sound and overall commercial impression to Opposer’s FILA Marks.
30. Applicant’s use or registration of Applicant’s alleged mark will deprive Opposer
of the ability to protect its reputation, persona and goodwill.
31. Applicant’s use or registration of Applicant’s alleged mark will blur and tarnish
the goodwill symbolized by Opposer’s FILA Marks.
10
32. Likelihood of tarnishment and damage to Opposer’s goodwill are enhanced by the
fact that prospective consumers who encounter defects in the quality of Applicant’s goods will
attribute those defects to Opposer, and this will tarnish Opposer’s reputation and goodwill.
33. By reason of the foregoing, Opposer will be damaged by the registration of
Applicant’s alleged mark, and registration should be refused.
WHEREFORE, Opposer respectfully requests that the Board sustain this opposition and
deny registration of the mark identified in Applicant’s application.
Date: June 11, 2019 FILA LUXEMBOURG S.Á.R.L.
By: Anthony V. Lupo Ross Q. Panko
ARENT FOX LLP 1717 K Street, NW Washington, DC 20036 (202) 857-6000
Attorneys for Opposer
11
EXHIBIT A
Opposer’s FILA Marks
Reg. No. 5,763,765
Registered May 28, 2019
Int. Cl.: 11, 21
Trademark
Principal Register
Fila Luxembourg S.à.r.L. (LUXEMBOURG société à responsabilité limitée (sarl) )26, Boulevard RoyalLuxembourg, LUXEMBOURG L-2449
CLASS 11: Running and walking safety accessories, namely, reflectors
FIRST USE 6-5-2018; IN COMMERCE 6-5-2018
CLASS 21: Water bottles sold empty
FIRST USE 3-00-2019; IN COMMERCE 3-00-2019
The mark consists of the word "FILA" in stylized letters.
OWNER OF U.S. REG. NO. 3284736, 0974050, 4245213
SER. NO. 86-764,639, FILED 09-22-2015
REQUIREMENTS TO MAINTAIN YOUR FEDERAL TRADEMARK REGISTRATION
WARNING: YOUR REGISTRATION WILL BE CANCELLED IF YOU DO NOT FILE THE
DOCUMENTS BELOW DURING THE SPECIFIED TIME PERIODS.
Requirements in the First Ten Years*
What and When to File:
First Filing Deadline: You must file a Declaration of Use (or Excusable Nonuse) between the 5th and 6th
years after the registration date. See 15 U.S.C. §§1058, 1141k. If the declaration is accepted, the
registration will continue in force for the remainder of the ten-year period, calculated from the registration
date, unless cancelled by an order of the Commissioner for Trademarks or a federal court.
Second Filing Deadline: You must file a Declaration of Use (or Excusable Nonuse) and an Application
for Renewal between the 9th and 10th years after the registration date.* See 15 U.S.C. §1059.
Requirements in Successive Ten-Year Periods*
What and When to File:
You must file a Declaration of Use (or Excusable Nonuse) and an Application for Renewalbetween every 9th and 10th-year period, calculated from the registration date.*
Grace Period Filings*
The above documents will be accepted as timely if filed within six months after the deadlines listed above withthe payment of an additional fee.
*ATTENTION MADRID PROTOCOL REGISTRANTS: The holder of an international registration with anextension of protection to the United States under the Madrid Protocol must timely file the Declarations of Use(or Excusable Nonuse) referenced above directly with the United States Patent and Trademark Office (USPTO).The time periods for filing are based on the U.S. registration date (not the international registration date). Thedeadlines and grace periods for the Declarations of Use (or Excusable Nonuse) are identical to those fornationally issued registrations. See 15 U.S.C. §§1058, 1141k. However, owners of international registrationsdo not file renewal applications at the USPTO. Instead, the holder must file a renewal of the underlyinginternational registration at the International Bureau of the World Intellectual Property Organization, underArticle 7 of the Madrid Protocol, before the expiration of each ten-year term of protection, calculated from thedate of the international registration. See 15 U.S.C. §1141j. For more information and renewal forms for theinternational registration, see http://www.wipo.int/madrid/en/.
NOTE: Fees and requirements for maintaining registrations are subject to change. Please check the
USPTO website for further information. With the exception of renewal applications for registered
extensions of protection, you can file the registration maintenance documents referenced above online at http://www.uspto.gov.
NOTE: A courtesy e-mail reminder of USPTO maintenance filing deadlines will be sent to trademark
owners/holders who authorize e-mail communication and maintain a current e-mail address with the
USPTO. To ensure that e-mail is authorized and your address is current, please use the Trademark
Electronic Application System (TEAS) Correspondence Address and Change of Owner Address Forms
available at http://www.uspto.gov.
Page: 2 of 2 / RN # 5763765
Reg. No. 5,722,517
Registered Apr. 09, 2019
Int. Cl.: 28
Trademark
Principal Register
Fila Luxembourg S.à.r.L. (LUXEMBOURG société à responsabilité limitée (sarl) )26, Boulevard RoyalLuxembourg, LUXEMBOURG L-2449
CLASS 28: Exercise equipment, namely, stability balls, work-out gloves, waist trimmerexercise belts, core-strengthening wheels, resistance bands, flat bands for use in stretchingand muscle resistance exercises, resistance cords, mats being personal exercise mats, yogamats, jump ropes, hand grip exercisers for non-medical purposes, exercise bars for pushupsand pull-ups, foam rollers, massage balls, ankle and wrist weights, hand weights, weightedgloves, weighted balls, medicine balls, inflatable balls, kettle bells
FIRST USE 10-1-2015; IN COMMERCE 10-1-2015
The mark consists of the word "FILA" in stylized letters.
OWNER OF U.S. REG. NO. 3284736, 0974050, 4245213
SER. NO. 86-442,929, FILED 11-03-2014
REQUIREMENTS TO MAINTAIN YOUR FEDERAL TRADEMARK REGISTRATION
WARNING: YOUR REGISTRATION WILL BE CANCELLED IF YOU DO NOT FILE THE
DOCUMENTS BELOW DURING THE SPECIFIED TIME PERIODS.
Requirements in the First Ten Years*
What and When to File:
First Filing Deadline: You must file a Declaration of Use (or Excusable Nonuse) between the 5th and 6th
years after the registration date. See 15 U.S.C. §§1058, 1141k. If the declaration is accepted, the
registration will continue in force for the remainder of the ten-year period, calculated from the registration
date, unless cancelled by an order of the Commissioner for Trademarks or a federal court.
Second Filing Deadline: You must file a Declaration of Use (or Excusable Nonuse) and an Application
for Renewal between the 9th and 10th years after the registration date.* See 15 U.S.C. §1059.
Requirements in Successive Ten-Year Periods*
What and When to File:
You must file a Declaration of Use (or Excusable Nonuse) and an Application for Renewalbetween every 9th and 10th-year period, calculated from the registration date.*
Grace Period Filings*
The above documents will be accepted as timely if filed within six months after the deadlines listed above withthe payment of an additional fee.
*ATTENTION MADRID PROTOCOL REGISTRANTS: The holder of an international registration with anextension of protection to the United States under the Madrid Protocol must timely file the Declarations of Use(or Excusable Nonuse) referenced above directly with the United States Patent and Trademark Office (USPTO).The time periods for filing are based on the U.S. registration date (not the international registration date). Thedeadlines and grace periods for the Declarations of Use (or Excusable Nonuse) are identical to those fornationally issued registrations. See 15 U.S.C. §§1058, 1141k. However, owners of international registrationsdo not file renewal applications at the USPTO. Instead, the holder must file a renewal of the underlyinginternational registration at the International Bureau of the World Intellectual Property Organization, underArticle 7 of the Madrid Protocol, before the expiration of each ten-year term of protection, calculated from thedate of the international registration. See 15 U.S.C. §1141j. For more information and renewal forms for theinternational registration, see http://www.wipo.int/madrid/en/.
NOTE: Fees and requirements for maintaining registrations are subject to change. Please check the
USPTO website for further information. With the exception of renewal applications for registered
extensions of protection, you can file the registration maintenance documents referenced above online at http://www.uspto.gov.
NOTE: A courtesy e-mail reminder of USPTO maintenance filing deadlines will be sent to trademark
owners/holders who authorize e-mail communication and maintain a current e-mail address with the
USPTO. To ensure that e-mail is authorized and your address is current, please use the Trademark
Electronic Application System (TEAS) Correspondence Address and Change of Owner Address Forms
available at http://www.uspto.gov.
Page: 2 of 2 / RN # 5722517
Reg. No. 5,681,241
Registered Feb. 19, 2019
Int. Cl.: 25
Trademark
Principal Register
Fila Luxembourg S.à.r.L. (LUXEMBOURG société à responsabilité limitée (sarl) )26, Boulevard RoyalLuxembourg, LUXEMBOURG L-2449
CLASS 25: footwear
FIRST USE 7-00-2014; IN COMMERCE 7-00-2014
THE MARK CONSISTS OF STANDARD CHARACTERS WITHOUT CLAIM TO ANYPARTICULAR FONT STYLE, SIZE OR COLOR
OWNER OF U.S. REG. NO. 1564119, 4573757, 4245213
SER. NO. 87-425,841, FILED 04-26-2017
REQUIREMENTS TO MAINTAIN YOUR FEDERAL TRADEMARK REGISTRATION
WARNING: YOUR REGISTRATION WILL BE CANCELLED IF YOU DO NOT FILE THE
DOCUMENTS BELOW DURING THE SPECIFIED TIME PERIODS.
Requirements in the First Ten Years*
What and When to File:
First Filing Deadline: You must file a Declaration of Use (or Excusable Nonuse) between the 5th and 6th
years after the registration date. See 15 U.S.C. §§1058, 1141k. If the declaration is accepted, the
registration will continue in force for the remainder of the ten-year period, calculated from the registration
date, unless cancelled by an order of the Commissioner for Trademarks or a federal court.
Second Filing Deadline: You must file a Declaration of Use (or Excusable Nonuse) and an Application
for Renewal between the 9th and 10th years after the registration date.* See 15 U.S.C. §1059.
Requirements in Successive Ten-Year Periods*
What and When to File:
You must file a Declaration of Use (or Excusable Nonuse) and an Application for Renewalbetween every 9th and 10th-year period, calculated from the registration date.*
Grace Period Filings*
The above documents will be accepted as timely if filed within six months after the deadlines listed above withthe payment of an additional fee.
*ATTENTION MADRID PROTOCOL REGISTRANTS: The holder of an international registration with anextension of protection to the United States under the Madrid Protocol must timely file the Declarations of Use(or Excusable Nonuse) referenced above directly with the United States Patent and Trademark Office (USPTO).The time periods for filing are based on the U.S. registration date (not the international registration date). Thedeadlines and grace periods for the Declarations of Use (or Excusable Nonuse) are identical to those fornationally issued registrations. See 15 U.S.C. §§1058, 1141k. However, owners of international registrationsdo not file renewal applications at the USPTO. Instead, the holder must file a renewal of the underlyinginternational registration at the International Bureau of the World Intellectual Property Organization, underArticle 7 of the Madrid Protocol, before the expiration of each ten-year term of protection, calculated from thedate of the international registration. See 15 U.S.C. §1141j. For more information and renewal forms for theinternational registration, see http://www.wipo.int/madrid/en/.
NOTE: Fees and requirements for maintaining registrations are subject to change. Please check the
USPTO website for further information. With the exception of renewal applications for registered
extensions of protection, you can file the registration maintenance documents referenced above online at http://www.uspto.gov.
NOTE: A courtesy e-mail reminder of USPTO maintenance filing deadlines will be sent to trademark
owners/holders who authorize e-mail communication and maintain a current e-mail address with the
USPTO. To ensure that e-mail is authorized and your address is current, please use the Trademark
Electronic Application System (TEAS) Correspondence Address and Change of Owner Address Forms
available at http://www.uspto.gov.
Page: 2 of 2 / RN # 5681241