Yolo Sportswear, LLCv.Matthew Grossman

Trademark Trial and Appeal Board

May 24, 2007

No. 91165787 (T.T.A.B. May. 24, 2007)

Mailed:
May 24, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Yolo Sportswear, LLC
v.
Matthew Grossman
_____

Opposition No. 91165787
to application Serial No. 76573605
filed on January 30, 2004
_____

Mark G. McCreary, of Fox Rothschild LLP for Yolo Sportswear,
LLC

Afschineh Latifi, of Tucker & Latifi, LLP for Matthew
Grossman.
______

Before Grendel, Cataldo, and Wellington,
Administrative Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:

Matthew Grossman filed an intent-to-use application for
the mark YOLO – YOU ONLY LIVE ONCE, in standard character
form, for “jewelry, namely, rings, earrings, bracelets,
necklaces, pendants, cuff links and watches” in
International Class 14.1
Yolo Sportswear, LLC (hereinafter, “opposer”) opposed
the registration of applicant’s mark on the ground of
priority of use and likelihood of confusion in accordance

1 Application Serial No. 76573605, filed January 30, 2004.
THIS OPINION IS NOT A
PRECEDENT OF THE T.T.A.B.
Opposition No. 91165787
2
with Section 2(d) of the Lanham Act, 15 U.S.C. §1052(d).
Opposer pleads ownership of an application for the mark,
YOLO SPORTSWEAR,2 for use on a variety of clothing articles.
Opposer's application has been suspended by the Trademark
Office because of a potential likelihood of confusion based
on applicant's prior-filed application involved herein.
Opposer also alleges common law rights in the mark, YOLO YOU
ONLY LIVE ONCE, since 1996 for use on the same goods recited
in its application. Opposer also pleads common law rights
in the aforesaid marks as used in connection with the
“offering for sale to the public of jewelry,” as early as
1997.
Applicant, in his answer, denied the salient
allegations of the claim and asserted several "affirmative
defenses."3
Only opposer has submitted evidence and a brief on the
case. Specifically, opposer submitted the trial testimony
deposition of Karen E. Forster, opposer’s Vice President and
Secretary, with accompanying exhibits.4 One of the exhibits

2 Application Serial No. 78376061, filed March 1, 2004.
3 Included in his affirmative defenses, Mr. Grossman avers that
opposer “fails to state a claim for which relief may be granted.”
The Board does not construe this statement as a motion to dismiss
because no actual motion or brief in support thereof was filed by
Mr. Grossman. As to the other affirmative defenses, they are
deemed to have been waived in view of applicant's failure to
submit any evidence or a brief.
4 By operation of the rules, the record also includes the
pleadings and the subject application.
Opposition No. 91165787
3
is a copy of opposer’s application for the mark, YOLO
SPORTSWEAR.
Based on applicant’s inaction herein, the Board
contacted applicant’s counsel to determine whether applicant
still had an interest in this proceeding. On May 18, 2007,
applicant’s counsel, Afschineh Latifi, Esq., informed the
Board that applicant was no longer interested in pursuing
this matter or defending his application. The Board does
not construe counsel for applicant’s statement as an
abandonment of the application and no such abandonment is on
file with the Board. And, we are cognizant of the burden
that remains with opposer, namely, establishing its pleaded
case (in this case, its standing and Section 2(d) ground of
opposition) by a preponderance of the evidence. Cunningham
v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1848
(Fed. Cir. 2000). However, applicant’s stated lack of
interest allows the Board to provide the following succinct
explanation of our decision, without providing a complete
recitation of findings of fact and analysis in reaching the
decision.
Because opposer has an application that may be refused
registration pending the outcome of this proceeding, and its
likelihood of confusion claim is not frivolous, we find that
opposer has established its standing to oppose registration
of applicant's mark. Id.; see also Lipton Industries, Inc.
Opposition No. 91165787
4
v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA
1982). Opposer has established its priority because it has
established uncontroverted first use and use in commerce
dates in 1996 that predate applicant's January 30, 2004
filing date, the only date upon which applicant may rely
herein.
Based on the record before us, including the
uncontroverted deposition testimony submitted by opposer, we
find that opposer has established by a preponderance of
evidence that there is a likelihood of confusion between
opposer’s pleaded marks and applicant’s mark for the
parties’ respective goods.

Decision: The opposition is sustained and registration to
applicant is refused.