Acushnet Company v. Golf Gods - Complaint
Acushnet Company v. Golf Gods - Complaint
Acushnet Company v. Golf Gods - Complaint
ACUSHNET COMPANY,
Plaintiff,
Defendant.
COMPLAINT
trademark and trade dress infringement, false designation of origin, unfair competition,
trademark dilution, and unfair trade practices arising under federal, state, and/or common law
against Golf Gods Pty Ltd (“Defendant”). Plaintiff, by its undersigned attorneys, alleges as
follows, upon actual knowledge as to itself, and upon information and belief as to all other
matters:
NATURE OF ACTION
1. This is a civil action for trademark and trade dress infringement, false designation
of origin, unfair competition, and trademark dilution under the Lanham Act, 15 U.S.C. § 1051, et
seq., trademark dilution under Mass. Gen. Laws ch. 110H, § 13, unfair trade practices under
Mass. Gen. Laws ch. 93A, § 11, and unfair competition under the common law of
Massachusetts.
golf balls and accessories, clothing, and headwear under one or more of the following marks in
violation of Plaintiff’s trademark rights: (i) TITTIES (depicted in Plaintiff’s distinctive, stylized
“TITLEIST” script); (ii) HOE V1; (iii) #1 SLUTTIEST BALL IN GOLF; and (iv) FJ FOOTJOB
Case 1:18-cv-12093-JCB Document 1 Filed 10/05/18 Page 2 of 18
(collectively, the “Infringing Marks”). Goods bearing one or more of the Infringing Marks are
distributing golf balls using packaging that is nearly identical in appearance and overall
Trade Dress”), that is used on packaging for Acushnet’s TITLEIST PRO V1 golf balls.
Defendant’s golf ball packaging is hereafter referred to as the “Infringing Trade Dress.”
4. Plaintiff seeks equitable relief and damages for Defendant’s use of the Infringing
Trade Dress and the Infringing Marks, which are confusingly similar to and dilutive of Plaintiff’s
following federally registered and famous trademarks: (i) TITLEIST; (ii) TITLEIST (stylized);
(iii) PRO V1; (iv) TITLEIST #1 BALL IN GOLF; (v) #1 BALL IN GOLF; (vi) FJ; and (vii)
FOOTJOY (collectively, the “Acushnet Marks”). Goods bearing one or more of the Acushnet
PARTIES
5. Plaintiff is a corporation organized under the laws of Delaware, having its office
and principal place of business at 333 Bridge Street, Fairhaven, Massachusetts 02719.
Australia.
7. This Court has jurisdiction over the subject matter of this action pursuant to
15 U.S.C. §1121 and 28 U.S.C. §§ 1331 and 1338 (a) and (b). This Court also has diversity
jurisdiction under 28 U.S.C. § 1332 because the matter in controversy is between a citizen of a
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U.S. state and citizens or subjects of a foreign state and exceeds the sum or value of seventy-five
thousand dollars ($75,000.00), exclusive of interest and costs. In addition, this Court has
because those claims are so related to the federal claims that they form part of the same case or
controversy.
8. This Court has personal jurisdiction over Defendant, and venue is proper in the
business in this District using the Infringing Marks that gives rise to Plaintiff’s claims, Defendant
promotes, offers for sale, sells, and distributes goods under the Infringing Marks to customers
located in this District, and Defendant is causing harm to Plaintiff in this District. In the
alternative, this Court has personal jurisdiction over Defendant pursuant to Federal Rule of Civil
Procedure 4(k)(2) because Plaintiff’s claims arise under federal law, the defendant is not subject
to jurisdiction in any state’s courts of general jurisdiction, and this Court’s exercise of personal
jurisdiction comports with due process based on Defendant’s voluntary and intentional
nationwide contacts with the United States, which satisfy the criteria for relatedness, purposeful
availment, and reasonableness, such that Defendant could have reasonably anticipated the
exercise of personal jurisdiction; and venue is proper pursuant to 28 U.S.C. § 1391(b)(3) because
Defendant is subject to this Court’s personal jurisdiction and there is no district in which an
distribution of exceedingly high-quality, performance-driven golf products that are sold under
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multiple, world-famous, federally registered and common law trademarks, including the
Acushnet Marks.
10. Acushnet spends considerable amounts of money every year in advertising and
11. For 85 years, Acushnet and its predecessors in interest have continuously used the
iconic TITLEIST trademark shown below in commerce for a wide range of golf equipment,
accessories, and apparel, including golf balls, clubs, bags, gloves, head covers, clothing, and
headwear.
12. TITLEIST is the brand of choice among numerous male and female professional
golf players. Currently, there are more than 1,000 professional golf players worldwide that use
TITLEIST products.
trademark—since as early as 1933—has led it to become the top brand in the sport of golf. In
2017 alone, Acushnet had more than $512 million in sales of TITLEIST-branded golf balls, over
$400 million in sales of TITLEIST-branded golf clubs, and more than $142 million in sales of
other TITLEIST-branded golf gear, such as bags, headwear, gloves, and head covers.
14. TITLEIST golf balls have been played by more professional players on the U.S.
Professional Golf Association (“PGA”) Tour than all other brands of golf balls combined.
Acushnet’s famed TITLEIST PRO V1 golf ball has been the top-selling golf ball in the market
since its launch in 2000, with total sales in excess of $4.5 billion.
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15. Acushnet has used the mark #1 BALL IN GOLF in commerce for golf balls since
as early as 1978. Through its extensive use and promotion over the last 40 years, this mark has
acquired distinctiveness.
16. The Acushnet Trade Dress used to package Acushnet’s TITLEIST PRO V1 golf
balls is comprised of the marks TITLEIST, # 1 BALL IN GOLF, and PRO V1 positioned in a
unique color scheme and design. Through extensive promotion and sales, the Acushnet Trade
Dress has acquired distinctiveness and consumers have come to recognize Acushnet as the
17. For nearly a century, Acushnet and its predecessors have continuously used the
mark FOOTJOY in commerce for golf shoes, gloves, and apparel, and the mark FJ for such
goods since at least as early as 1969. FOOTJOY is the market-leading brand of golf gloves, and
has been the top-selling brand of golf shoes on the PGA Tour for over 60 years. In 2017 alone,
18. Acushnet also owns numerous federal trademark registrations for the Acushnet
Marks, which cover a variety of golf equipment, accessories, and apparel, including:
1155766, 1273662
PRO V1 2806919
1601034
1748627, 2697555
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True and correct copies of printouts from the United States Patent and Trademark Office
database showing the current ownership and status of these registrations are attached as
Exhibit A.
19. All of the foregoing registrations are valid, subsisting, and incontestable.
Pursuant to 15 U.S.C. §§ 1065 and 1115(b), these registrations constitute conclusive evidence of
Acushnet’s exclusive right to use the Acushnet Marks, as shown in these registrations, in
20. By virtue of its long and extensive use, its substantial promotional and marketing
efforts, and its strong sales of and revenues from the Acushnet Products, Acushnet has
established considerable goodwill and recognition and valuable trademark rights in the Acushnet
Marks and the Acushnet Trade Dress. Moreover, the Acushnet Marks and the Acushnet Trade
Dress are, and have long been, widely recognized by the general consuming public as the
Marks as applied to the Acushnet Products, the extensive worldwide use and promotion of the
Acushnet Marks by Acushnet, the strong and sustained commercial success of the Acushnet
Products, and the federal registrations for the Acushnet Marks on the Principal Register, the
which it sells the Infringing Products to consumers throughout the world. Defendant makes that
website available in the United States, uses that website to intentionally engage in U.S.
commerce, and knowingly accepts a substantial amount of recurrent business from U.S.
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consumers. Internet users can obtain information about the Infringing Products via Defendant’s
website, and can contact Defendant using an email address or a sales inquiry submission form
posted on Defendant’s website. Defendant further targets and attracts consumers in the United
States by listing all prices for the Infringing Products in U.S. Dollars by default, enabling real-
time notifications of recent purchases by consumers in the United States, and posting
testimonials of U.S. consumers who have purchased Infringing Products on its website.
Screenshots from Defendant’s website showing pricing in U.S. Dollars and examples of real-
time notifications of recent purchases of Infringing Products by consumers in the United States
are attached as Exhibit B. Screenshots from Defendant’s website showing examples of U.S.
23. Defendant is not now, nor has it ever been, a licensee of the Acushnet Marks or
the Acushnet Trade Dress, or otherwise authorized in any way to use any of the Acushnet Marks
appearance to the corresponding Acushnet Mark, thereby creating a confusingly similar overall
commercial impression. Moreover, Defendant intentionally uses the mark TITTIES in a stylized
script that is identical to the distinctive stylized script that Plaintiff has been using for its
TITLEIST mark for the past 85 years, and that is covered by several of Plaintiff’s federal
trademark registrations for its TITLEIST mark. Defendant’s TITTIES mark begins with the
same prefix (“Tit-”) as Plaintiff’s mark and also contains the letters (“ie”) in common, the result
of which is that the mark TITTIES bears a strikingly similar visual resemblance to the famous
TITLEIST mark.
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25. As shown below, Defendant sells golf balls using packaging that is nearly
identical in appearance and overall commercial impression to the Acushnet Trade Dress. In an
effort to cause confusion and deceive consumers, Defendant intentionally uses a nearly identical
color scheme and design as part of the Infringing Trade Dress, and places the marks TITTIES,
HOE V1, and #1 SLUTTIEST BALL IN GOLF in the exact same position using a similar font
and font size, as Acushnet’s TITLEIST, PRO V1, and #1 BALL IN GOLF marks.
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26. Defendant uses and has used the Infringing Marks in connection with advertising,
promoting, offering for sale, selling, and distributing the following Infringing Products to the
consuming public:
Golf balls
Golf balls
Hats
27. Defendant uses the Infringing Trade Dress and the Infringing Marks in connection
with identical or closely related goods, targets the same classes of consumers, and uses similar
sales channels as Plaintiff. Screenshots showing the Infringing Trade Dress and examples of the
Infringing Products, as advertised, promoted, and offered for sale through Defendant’s website
28. Defendant’s use of the Infringing Trade Dress and the Infringing Marks falsely
suggests that the Infringing Products are connected to, sponsored, approved or authorized by, or
29. Defendant’s use of the Infringing Trade Dress and the Infringing Marks
offensive and obscene references to women, sexual organs, and sexual activity—in the minds of
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consumers that conflicts with the positive associations and images that Plaintiff has long
promulgated in advertising and promoting the Acushnet Products, and that tarnishes the brand
30. Defendant’s actions and use of the Infringing Trade Dress and the Infringing
Marks are offensive not only to women, but to consumers in general, including men, women, and
children of all ages who are offended by vulgar language, inappropriate sexual references, and
31. At the time that Defendant began using the Infringing Trade Dress and the
Infringing Marks, Defendant had actual knowledge of Plaintiff’s rights to the Acushnet Trade
Dress and the Acushnet Marks and the Infringing Trade Dress’s and the Infringing Marks’
unwholesome and obscene association with sexual activity. Therefore, Defendant’s use of the
Infringing Trade Dress and the Infringing Marks was done willfully and in bad faith in an effort
to dilute and trade off of the fame, reputation, and goodwill of Plaintiff and the Acushnet Trade
32. Defendant’s actions described above have damaged and injured and, if permitted
to continue, will further damage and injure Acushnet, the Acushnet Marks, the Acushnet Trade
Dress, Acushnet’s reputation and goodwill associated with the Acushnet Marks and the Acushnet
Trade Dress, Acushnet’s reputation for exceedingly high-quality products, and the public’s
33. Defendant’s actions described above have caused and are likely to cause
and have falsely suggested and are likely to falsely suggest a sponsorship, connection, license, or
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association of Defendant, and its goods and commercial activities with Acushnet, thereby
injuring Acushnet and the public. See, e.g., Exhibit C, customer testimonial from Ryan M. in
the United States (“It’s been uneventful so far. Worn the Titties hat twice for a round of golf
and nobody has noticed until I told my buddies I was playing with it said Titties, not Titleist.
Even showed it to my entire family, including my mother-in-law and ole lady and daughters,
34. Defendant’s actions described above are likely to dilute the distinctiveness and
value of the Acushnet Trade Dress and the famous Acushnet Marks, thereby injuring Acushnet.
35. Defendant’s actions described above have irreparably harmed and, if not enjoined,
will continue to irreparably harm Acushnet, the Acushnet Trade Dress, and the Acushnet Marks.
37. Plaintiff repeats and re-alleges each and every allegation set forth in Paragraphs 1
38. Defendant’s actions described above are likely to cause confusion or mistake, or
39. Defendant’s actions described above have at all times relevant to this action been
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40. As a direct and proximate result of Defendant’s actions described above, Plaintiff
41. Plaintiff repeats and re-alleges each and every allegation set forth in Paragraphs 1
42. Defendant’s actions described above are likely to cause confusion or mistake, or
Infringing Trade Dress, and commercial activities, and thus constitute trademark and trade dress
infringement, false designation of origin, and unfair competition with respect to Plaintiff’s
1125(a)(1)(A).
43. Defendant’s actions described above have at all times relevant to this action been
44. As a direct and proximate result of Defendant’s actions described above, Plaintiff
45. Plaintiff repeats and re-alleges each and every allegation set forth in Paragraphs 1
46. By engaging in the actions described above, Defendant has made, and continues
to make, false and misleading representations of fact to consumers and potential consumers,
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qualities of its products in violation of Section 43(a)(1)(B) of the Lanham Act, 15 U.S.C. §
1125(a)(1)(B).
47. Defendant’s actions described above have at all times relevant to this action been
48. As a direct and proximate result of Defendant’s actions described above, Plaintiff
49. Plaintiff repeats and re-alleges each and every allegation set forth in Paragraphs 1
50. Defendant’s actions described above, all occurring after the Acushnet Marks
became famous, are likely to cause dilution by blurring or by tarnishment, or both, of the
distinctive quality of the famous Acushnet Marks in violation of Section 43(c)(1) of the Lanham
51. Defendant’s actions described above have at all times relevant to this action been
52. As a direct and proximate result of Defendant’s actions described above, Plaintiff
53. Plaintiff repeats and re-alleges each and every allegation set forth in Paragraphs 1
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54. Defendant’s actions described above are likely to cause injury to Plaintiff’s
business reputation and to dilute the distinctive quality of Plaintiff’s famous Acushnet Marks,
valid at common law, in violation of Mass. Gen. Laws ch. 110H, § 13.
55. Defendant’s actions described above have at all times relevant to this action been
56. As a direct and proximate result of Defendant’s actions described above, Plaintiff
57. Plaintiff repeats and re-alleges each and every allegation set forth in Paragraphs 1
58. Plaintiff and Defendant are each engaged in the conduct of trade or commerce
59. Defendant’s acts and practices described above constitute unfair methods of
competition and unfair or deceptive acts or unlawful practices, which were committed by
Defendant primarily and substantially in the Commonwealth of Massachusetts, and have the
effect, or are likely to have the effect, of causing Plaintiff to suffer loss of money or property, in
60. Defendant’s actions described above have at all times relevant to this action been
61. As a direct and proximate result of Defendant’s actions described above, Plaintiff
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62. Plaintiff repeats and re-alleges each and every allegation set forth in Paragraphs 1
63. Defendant’s actions described above create the impression in the mind of the
public that Plaintiff is responsible for the quality and performance of Defendant’s Infringing
Products, or is otherwise connected or associated with Defendant, and thus constitute common
law trademark and trade dress infringement and unfair competition in violation of Plaintiff’s
64. Defendant’s actions described above have at all times relevant to this action been
65. As a direct and proximate result of Defendant’s actions described above, Plaintiff
WHEREFORE, Plaintiff prays that this Court enter judgment in its favor on each and
every claim for relief set forth above and award it relief including, but not limited to, the
following:
A. An Order declaring that Defendant’s use of the Infringing Marks and the
Infringing Trade Dress, as described above, infringes Plaintiff’s trademark rights, and that
Defendant’s actions constitute trademark and trade dress infringement, false designation of
origin, unfair competition, trademark dilution, and unfair trade practices arising under federal,
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affiliates, distributors, dealers, and all persons in active concert or participation with any of them:
1. from using the Acushnet Marks and the Acushnet Trade Dress, and any
mark that is confusingly similar thereto, including without limitation, the Infringing
Marks and the Infringing Trade Dress, or any other mark using the stylized “TITLEIST”
script, or any other name, mark, or design that is dilutive or likely to lead consumers to
mistakenly believe that its products or services are associated with or authorized by
Plaintiff; and
and promotional materials, and any other physical items in Defendant’s possession or control
that bear or contain the Infringing Marks or the Infringing Trade Dress, including without
limitation, the Infringing Products, or any other mark that is confusingly similar to, or is dilutive
D. An Order requiring Defendant to alter all websites and social media under its
control or direction to remove the Infringing Products, the Infringing Trade Dress, the Infringing
Marks, and any other mark that is confusingly similar to, or is dilutive of, the Acushnet Marks or
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F. An Order requiring Defendant to file with this Court and serve on Plaintiff’s
attorneys, within thirty (30) days after the date of entry of any injunction, a report in writing and
under oath setting forth in detail the manner and form in which Defendant has complied with the
injunction;
amount as yet undetermined caused by the foregoing acts of trademark and trade dress
unfair trade practices, and trebling such damages for payment to Plaintiff, in accordance with
H. An Order requiring Defendant to account for and pay to Plaintiff any and all
profits arising from the foregoing acts of trademark and trade dress infringement, dilution, false
designation of origin, misrepresentation, unfair competition, and unfair trade practices, and
trebling such profits for payment to Plaintiff, in accordance with 15 U.S.C. § 1117 and other
applicable laws;
I. Entry of an award of multiple damages as allowed by Mass. Gen. Laws ch. 93A,
K. An Order requiring Defendant to pay Plaintiff the costs of bringing this action,
including reasonable attorneys’ fees, pursuant to 15 U.S.C. § 1117 and other applicable laws;
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JURY DEMAND
Under Rule 38 of the Federal Rules of Civil Procedure, Plaintiff requests a trial by jury of
Respectfully submitted,
ACUSHNET COMPANY
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EXHIBIT A
Generated on: This page was generated by TSDR on 2018-10-04 15:33:04 EDT
Mark: TITLEIST
Mark Information
Mark Literal TITLEIST
Elements:
Standard Character No
Claim:
Mark Drawing 5 - AN ILLUSTRATION DRAWING WITH WORD(S) /LETTER(S)/ NUMBER(S) INSTYLIZED FORM
Type:
FAIRHAVEN, MASSACHUSETTS
UNITED STATES
Legal Entity Type: CORPORATION State or Country DELAWARE
Where Organized:
Attorney/Correspondence Information
Attorney of Record - None
Correspondent
Correspondent Lisa Rogan
Name/Address: ACUSHNET COMPANY
333 BRIDGE STREET
FAIRHAVEN, MASSACHUSETTS 02719
UNITED STATES
Phone: 508-979-2000
Correspondent e- [email protected] andrea_sorell@acush Correspondent e- Yes
mail: netgolf.com [email protected] nlutz@ mail Authorized:
kelleydrye.com
Domestic Representative - Not Found
Prosecution History
Proceeding
Date Description
Number
Sep. 28, 2016 ASSIGNMENT OF OWNERSHIP NOT UPDATED AUTOMATICALLY
May 16, 2014 NOTICE OF ACCEPTANCE OF SEC. 8 & 9 - E-MAILED
May 16, 2014 REGISTERED AND RENEWED (FIFTH RENEWAL - 10 YRS) 75461
May 16, 2014 REGISTERED - SEC. 8 (10-YR) ACCEPTED/SEC. 9 GRANTED 75461
May 09, 2014 REGISTERED - COMBINED SECTION 8 (10-YR) & SEC. 9 FILED 75461
May 09, 2014 TEAS CHANGE OF CORRESPONDENCE RECEIVED
May 09, 2014 TEAS SECTION 8 & 9 RECEIVED
Jun. 29, 2009 REVIEW OF CORRESPONDENCE COMPLETE 61619
Sep. 26, 2008 CASE FILE IN TICRS
May 05, 2006 TEAS CHANGE OF CORRESPONDENCE RECEIVED
Sep. 18, 2004 REGISTERED AND RENEWED (FOURTH RENEWAL - 10 YRS)
Sep. 18, 2004 REGISTERED - SEC. 8 (10-YR) ACCEPTED/SEC. 9 GRANTED
Aug. 12, 2004 REGISTERED - COMBINED SECTION 8 (10-YR) & SEC. 9 FILED
Aug. 12, 2004 TEAS SECTION 8 & 9 RECEIVED
Mar. 04, 2004 PAPER RECEIVED
Jan. 21, 2004 TEAS CHANGE OF CORRESPONDENCE RECEIVED
Sep. 28, 1994 REGISTERED AND RENEWED (THIRD RENEWAL - 10 YRS)
Aug. 29, 1994 RESPONSE RECEIVED TO POST REG. ACTION
Jul. 29, 1994 REGISTERED - SEC. 9 FILED/CHECK RECORD FOR SEC. 8
Jul. 21, 1994 POST REGISTRATION ACTION MAILED - SEC. 9
Feb. 18, 1994 REGISTERED - SEC. 9 FILED/CHECK RECORD FOR SEC. 8
Aug. 14, 1974 REGISTERED AND RENEWED (SECOND RENEWAL - 20 YRS)
Name: ACUSHNET COMPANY, -MERGED INTO- Execution Date: Feb. 14, 1977
Legal Entity Type: CORPORATION State or Country MASSACHUSETTS
Where Organized:
Assignee
Name: WELLS FARGO BANK, NATIONAL ASSOCIATION, AS ADMINISTRATIVE AGENT
Legal Entity Type: NATIONAL ASSOCIATION State or Country UNITED STATES
Where Organized:
Address: 1808 ASTON AVENUE
SUITE 250
CARLSBAD, CALIFORNIA 92008
Correspondent
Correspondent LATHAM & WATKINS LLP C/O ANGELA M. AMARU
Name:
Correspondent 885 THIRD AVENUE
Address: SUITE 1000
NEW YORK, NY 10022
Domestic Representative - Not Found
Assignment 6 of 6
Conveyance: RELEASE OF SECURITY INTEREST IN TRADEMARKS PREVIOUSLY RECORDED AT REEL/FRAME (4673/0710)
Reel/Frame: 5879/0448 Pages: 10
Date Recorded: Sep. 14, 2016
Supporting assignment-tm-5879-0448.pdf
Documents:
Assignor
Name: KOREA DEVELOPMENT BANK, NEW YORK Execution Date: Jul. 28, 2016
BRANCH, AS ADMINISTRATIVE AGENT
Legal Entity Type: NEW YORK STATE BANKING DEPARTMENT- State or Country KOREA, REPUBLIC OF
LICENSED BRANCH OF A STATE-OWNED Where Organized:
POLICY BANK
Assignee
Name: ACUSHNET COMPANY
Legal Entity Type: CORPORATION State or Country DELAWARE
Where Organized:
Address: 333 BRIDGE STREET
FAIRHAVEN, MASSACHUSETTS 02719
Correspondent
Correspondent AMBER HAREZLAK
Name:
Correspondent 2475 HANOVER STREET
Address: PALO ALTO, CA 94304
Domestic Representative - Not Found
Proceedings
Summary
Number of 6
Proceedings:
Type of Proceeding: Opposition
Proceeding 91234606 Filing Date: May 17, 2017
Number:
Status: Terminated Status Date: Aug 24, 2017
Interlocutory YONG OH (RICHARD) KIM
Attorney:
Defendant
Name: Jeffrey William Woodworth
Correspondent JEFFREY WILLIAM WOODWORTH
Address: 4946 WATT AVE STE 28
NORTH HIGHLANDS CA , 95660-5158
UNITED STATES
Correspondent e- [email protected]
mail:
Associated marks
Case 1:18-cv-12093-JCB Document 1-1 Filed 10/05/18 Page 7 of 94
Serial Registration
Mark Application Status
Number Number
THE ILLEST Abandoned - After Inter-Partes Decision 85428865
Plaintiff(s)
Name: Acushnet Company
Correspondent NANCY H LUTZ
Address: MERCHANT & GOULD PC
80 S 8TH ST STE 3200
MINNEAPOLIS MN , 55402-2215
UNITED STATES
Correspondent e- [email protected] , [email protected] , [email protected] , [email protected]
mail: , [email protected]
Associated marks
Serial Registration
Mark Application Status
Number Number
TITLEIST REGISTERED AND RENEWED 71350879 316118
TITLEIST REGISTERED AND RENEWED 73230709 1155766
TITLEIST REGISTERED AND RENEWED 72376815 934406
TITLEIST REGISTERED AND RENEWED 72383144 933271
TITLEIST REGISTERED AND RENEWED 78781730 3176825
TITLEIST REGISTERED AND RENEWED 73411655 1273662
TITLEIST #1 BALL IN GOLF. REGISTERED AND RENEWED 73756857 1601034
TEAM TITLEIST Registered 85672974 4295551
Prosecution History
Entry Number History Text Date Due Date
1 FILED AND FEE May 17, 2017
2 NOTICE AND TRIAL DATES SENT; ANSWER DUE: May 17, 2017 Jun 26, 2017
3 PENDING, INSTITUTED May 17, 2017
4 NOTICE OF DEFAULT Jul 06, 2017
5 BD DECISION: SUSTAINED Aug 24, 2017
6 TERMINATED Aug 24, 2017
Type of Proceeding: Opposition
Proceeding 91200449 Filing Date: Jun 29, 2011
Number:
Status: Terminated Status Date: Nov 08, 2016
Interlocutory WENDY COHEN
Attorney:
Defendant
Name: Fatlace, LLC aka AKA Illest
Correspondent MARK C ARCENAL
Address: 800 S AMPHLETT BLVD
SAN MATEO CA , 94402
UNITED STATES
Correspondent e- [email protected]
mail:
Associated marks
Serial Registration
Mark Application Status
Number Number
ILLEST Abandoned - After Inter-Partes Decision 77846283
Plaintiff(s)
Name: Acushnet Company
Correspondent NANCY H LUTZ
Address: MERCHANT & GOULD PC
PO BOX 2910
MINNEAPOLIS MN , 55402-0910
UNITED STATES
Correspondent e- [email protected] , [email protected] , [email protected] , [email protected]
mail:
Case 1:18-cv-12093-JCB Document 1-1 Filed 10/05/18 Page 8 of 94
Associated marks
Serial Registration
Mark Application Status
Number Number
TITLEIST REGISTERED AND RENEWED 73230709 1155766
TITLEIST REGISTERED AND RENEWED 71350879 316118
TITLEIST REGISTERED AND RENEWED 72376815 934406
TITLEIST REGISTERED AND RENEWED 72383144 933271
TITLEIST REGISTERED AND RENEWED 78781730 3176825
TITLEIST REGISTERED AND RENEWED 73411655 1273662
TITLEIST #1 BALL IN GOLF. REGISTERED AND RENEWED 73756857 1601034
TITLEIST PERFORMANCE INSTITUTE Cancelled - Section 8 78314310 3111131
Prosecution History
Entry Number History Text Date Due Date
1 FILED AND FEE Jun 29, 2011
2 NOTICE AND TRIAL DATES SENT; ANSWER DUE: Jun 29, 2011 Aug 08, 2011
3 PENDING, INSTITUTED Jun 29, 2011
4 ANSWER Aug 08, 2011
5 P'S MOT TO SUSP PEND SETLMT NEGOTIATIONS Oct 05, 2011
6 SUSPENDED Oct 12, 2011
7 P'S MOT TO SUSP PEND SETLMT NEGOTIATIONS Dec 30, 2011
8 SUSPENDED Jan 05, 2012
9 P'S MOT TO SUSP PEND SETLMT NEGOTIATIONS Feb 27, 2012
10 SUSPENDED Mar 01, 2012
11 P'S MOT TO SUSP PEND SETLMT NEGOTIATIONS Apr 27, 2012
12 SUSPENDED May 01, 2012
13 P'S MOT TO SUSP PEND SETLMT NEGOTIATIONS Jul 26, 2012
14 SUSPENDED Jul 31, 2012
15 P'S MOT TO SUSP PEND SETLMT NEGOTIATIONS Oct 24, 2012
16 SUSPENDED Nov 07, 2012
17 P'S MOT TO SUSP PEND SETLMT NEGOTIATIONS Dec 26, 2012
18 SUSPENDED Jan 08, 2013
19 P'S MOT TO SUSP PEND SETLMT NEGOTIATIONS Feb 22, 2013
20 SUSPENDED Mar 05, 2013
21 P MOT TO SUSP W/ CONSENT PEND SETTL NEGOTIATIONS Apr 23, 2013
22 SUSPENDED Apr 25, 2013
23 P MOT TO SUSP W/ CONSENT PEND SETTL NEGOTIATIONS Jun 24, 2013
24 SUSPENDED Jun 26, 2013
25 P MOT TO SUSP W/ CONSENT PEND SETTL NEGOTIATIONS Aug 22, 2013
26 SUSPENDED Aug 28, 2013
27 P MOT TO SUSP W/ CONSENT PEND SETTL NEGOTIATIONS Oct 23, 2013
28 SUSPENDED Oct 30, 2013
29 P MOT TO SUSP W/ CONSENT PEND SETTL NEGOTIATIONS Jan 22, 2014
30 SUSPENDED Feb 26, 2014
31 P MOT TO SUSP W/ CONSENT PEND SETTL NEGOTIATIONS Apr 21, 2014
32 SUSPENDED Jul 02, 2014
33 P MOT TO SUSP W/ CONSENT PEND SETTL NEGOTIATIONS Jul 21, 2014
34 SUSPENDED Jul 31, 2014
35 P CHANGE OF CORRESP ADDRESS Sep 02, 2014
36 P MOT TO SUSP W/ CONSENT PEND SETTL NEGOTIATIONS Oct 20, 2014
37 SUSPENDED Oct 24, 2014
38 P MOT TO SUSP W/ CONSENT PEND SETTL NEGOTIATIONS Nov 18, 2014
39 SUSPENDED Nov 24, 2014
40 P MOT TO SUSP W/ CONSENT PEND SETTL NEGOTIATIONS Jan 16, 2015
41 SUSPENDED Jan 26, 2015
42 SUSPENDED Jan 26, 2015
Case 1:18-cv-12093-JCB Document 1-1 Filed 10/05/18 Page 9 of 94
16 PLT 20 DAYS TO SERVE MOT; DEF 20 DAYS TO RESPONSE Nov 27, 1991
17 PL`S MOT. FOR DEFAULT OR COMPEL Dec 20, 1991
18 PL`S MEMO IN SUPP &AFFDVT OF #17 ` Dec 20, 1991
19 STIP ABANDOMENT OF SN 012,091 Jan 08, 1992
20 BOARD'S DECISION: SUSTAINED Jan 24, 1992
21 TERMINATED Feb 04, 1992
Type of Proceeding: Opposition
Proceeding 91080967 Filing Date: Aug 10, 1989
Number:
Case 1:18-cv-12093-JCB Document 1-1 Filed 10/05/18 Page 11 of 94
Generated on: This page was generated by TSDR on 2018-10-04 15:34:43 EDT
Mark: TITLEIST
Mark Information
Mark Literal TITLEIST
Elements:
Standard Character No
Claim:
Mark Drawing 1 - TYPESET WORD(S) /LETTER(S) /NUMBER(S)
Type:
For: GOLF EQUIPMENT COMPRISING GOLF BALLS, GOLF CLUBS, GOLF BAGS, GOLF GLOVES AND GOLF HEADCOVERS
International 028 U.S Class(es): 022 - Primary Class
Class(es):
Class Status: ACTIVE
Basis: 1(a)
First Use: Dec. 1933 Use in Commerce: Dec. 1933
Attorney/Correspondence Information
Attorney of Record - None
Correspondent
Correspondent LISA ROGAN
Name/Address: ACUSHNET COMPANY
333 BRIDGE STREET
FAIRHAVEN, MASSACHUSETTS 02719
UNITED STATES
Phone: 508-979-2000
Correspondent e- [email protected] Lisa_rogan@acushne Correspondent e- Yes
mail: tgolf.com [email protected] mail Authorized:
Domestic Representative - Not Found
Prosecution History
Proceeding
Date Description
Number
Dec. 28, 2017 NOTICE OF SUIT
Sep. 28, 2016 ASSIGNMENT OF OWNERSHIP NOT UPDATED AUTOMATICALLY
Nov. 26, 2013 NOTICE OF SUIT
Feb. 06, 2013 NOTICE OF SUIT
May 09, 2012 NOTICE OF ACCEPTANCE OF SEC. 8 & 9 - E-MAILED
May 09, 2012 REGISTERED AND RENEWED (THIRD RENEWAL - 10 YRS) 66607
May 09, 2012 REGISTERED - SEC. 8 (10-YR) ACCEPTED/SEC. 9 GRANTED 66607
May 09, 2012 CASE ASSIGNED TO POST REGISTRATION PARALEGAL 66607
Apr. 25, 2012 TEAS SECTION 8 & 9 RECEIVED
Apr. 25, 2012 TEAS CHANGE OF CORRESPONDENCE RECEIVED
Oct. 08, 2009 REVIEW OF CORRESPONDENCE COMPLETE 59807
Sep. 08, 2008 CASE FILE IN TICRS
May 05, 2006 TEAS CHANGE OF CORRESPONDENCE RECEIVED
Mar. 04, 2004 PAPER RECEIVED
Jan. 21, 2004 TEAS CHANGE OF CORRESPONDENCE RECEIVED
Jun. 20, 2002 REGISTERED AND RENEWED (SECOND RENEWAL - 10 YRS)
Jun. 20, 2002 REGISTERED - SEC. 8 (10-YR) ACCEPTED/SEC. 9 GRANTED
Apr. 02, 2002 REGISTERED - COMBINED SECTION 8 (10-YR) & SEC. 9 FILED
Jul. 01, 1992 REGISTERED AND RENEWED (FIRST RENEWAL - 10 YRS)
Mar. 18, 1992 REGISTERED - SEC. 9 FILED/CHECK RECORD FOR SEC. 8
Mar. 27, 1978 REGISTERED - SEC. 8 (6-YR) ACCEPTED & SEC. 15 ACK.
Proceedings
Summary
Case 1:18-cv-12093-JCB Document 1-1 Filed 10/05/18 Page 17 of 94
Number of 2
Proceedings:
Type of Proceeding: Opposition
Proceeding 91234606 Filing Date: May 17, 2017
Number:
Status: Terminated Status Date: Aug 24, 2017
Interlocutory YONG OH (RICHARD) KIM
Attorney:
Defendant
Name: Jeffrey William Woodworth
Correspondent JEFFREY WILLIAM WOODWORTH
Address: 4946 WATT AVE STE 28
NORTH HIGHLANDS CA , 95660-5158
UNITED STATES
Correspondent e- [email protected]
mail:
Associated marks
Serial Registration
Mark Application Status
Number Number
THE ILLEST Abandoned - After Inter-Partes Decision 85428865
Plaintiff(s)
Name: Acushnet Company
Correspondent NANCY H LUTZ
Address: MERCHANT & GOULD PC
80 S 8TH ST STE 3200
MINNEAPOLIS MN , 55402-2215
UNITED STATES
Correspondent e- [email protected] , [email protected] , [email protected] , [email protected]
mail: , [email protected]
Associated marks
Serial Registration
Mark Application Status
Number Number
TITLEIST REGISTERED AND RENEWED 71350879 316118
TITLEIST REGISTERED AND RENEWED 73230709 1155766
TITLEIST REGISTERED AND RENEWED 72376815 934406
TITLEIST REGISTERED AND RENEWED 72383144 933271
TITLEIST REGISTERED AND RENEWED 78781730 3176825
TITLEIST REGISTERED AND RENEWED 73411655 1273662
TITLEIST #1 BALL IN GOLF. REGISTERED AND RENEWED 73756857 1601034
TEAM TITLEIST Registered 85672974 4295551
Prosecution History
Entry Number History Text Date Due Date
1 FILED AND FEE May 17, 2017
2 NOTICE AND TRIAL DATES SENT; ANSWER DUE: May 17, 2017 Jun 26, 2017
3 PENDING, INSTITUTED May 17, 2017
4 NOTICE OF DEFAULT Jul 06, 2017
5 BD DECISION: SUSTAINED Aug 24, 2017
6 TERMINATED Aug 24, 2017
Type of Proceeding: Opposition
Proceeding 91200449 Filing Date: Jun 29, 2011
Number:
Status: Terminated Status Date: Nov 08, 2016
Interlocutory WENDY COHEN
Attorney:
Defendant
Name: Fatlace, LLC aka AKA Illest
Correspondent MARK C ARCENAL
Address: 800 S AMPHLETT BLVD
Case 1:18-cv-12093-JCB Document 1-1 Filed 10/05/18 Page 18 of 94
Generated on: This page was generated by TSDR on 2018-10-04 15:36:40 EDT
Mark: TITLEIST
Mark Information
Mark Literal TITLEIST
Elements:
Standard Character No
Claim:
Mark Drawing 1 - TYPESET WORD(S) /LETTER(S) /NUMBER(S)
Type:
Attorney/Correspondence Information
Attorney of Record
Attorney Name: PETER D VOGL
Correspondent
Correspondent Lisa Rogan
Name/Address: 333 BRIDGE STREET
FAIRHAVEN, MASSACHUSETTS 02719
UNITED STATES
Phone: 508-979-2000
Correspondent e- [email protected] Lisa_rogan@acushne Correspondent e- Yes
mail: tgolf.com [email protected] mail Authorized:
Domestic Representative - Not Found
Prosecution History
Proceeding
Date Description
Number
Sep. 28, 2016 ASSIGNMENT OF OWNERSHIP NOT UPDATED AUTOMATICALLY
May 29, 2014 NOTICE OF SUIT
Dec. 02, 2013 NOTICE OF SUIT
May 08, 2012 NOTICE OF ACCEPTANCE OF SEC. 8 & 9 - E-MAILED
May 08, 2012 REGISTERED AND RENEWED (SECOND RENEWAL - 10 YRS) 70132
May 08, 2012 REGISTERED - SEC. 8 (10-YR) ACCEPTED/SEC. 9 GRANTED 70132
May 08, 2012 CASE ASSIGNED TO POST REGISTRATION PARALEGAL 70132
Apr. 24, 2012 TEAS SECTION 8 & 9 RECEIVED
Apr. 24, 2012 TEAS CHANGE OF CORRESPONDENCE RECEIVED
Oct. 08, 2009 REVIEW OF CORRESPONDENCE COMPLETE 59807
Sep. 04, 2008 CASE FILE IN TICRS
May 05, 2006 TEAS CHANGE OF CORRESPONDENCE RECEIVED
Mar. 04, 2004 PAPER RECEIVED
Jan. 21, 2004 TEAS CHANGE OF CORRESPONDENCE RECEIVED
Jun. 20, 2002 REGISTERED AND RENEWED (FIRST RENEWAL - 10 YRS)
Jun. 20, 2002 REGISTERED - SEC. 8 (10-YR) ACCEPTED/SEC. 9 GRANTED
Apr. 02, 2002 REGISTERED - COMBINED SECTION 8 (10-YR) & SEC. 9 FILED
May 28, 1992 REGISTERED AND RENEWED (FIRST RENEWAL - 10 YRS)
Apr. 29, 1992 REGISTERED - SEC. 9 FILED/CHECK RECORD FOR SEC. 8
Mar. 27, 1978 REGISTERED - SEC. 8 (6-YR) ACCEPTED
IRVINE, CA 92614-8255
Domestic Representative - Not Found
Assignment 3 of 4
Conveyance: SECURITY INTEREST
Reel/Frame: 5841/0382 Pages: 11
Date Recorded: Jul. 28, 2016
Supporting assignment-tm-5841-0382.pdf
Documents:
Assignor
Name: ACUSHNET COMPANY Execution Date: Jul. 28, 2016
Legal Entity Type: CORPORATION State or Country DELAWARE
Where Organized:
Assignee
Name: WELLS FARGO BANK, NATIONAL ASSOCIATION, AS ADMINISTRATIVE AGENT
Legal Entity Type: NATIONAL ASSOCIATION State or Country UNITED STATES
Where Organized:
Address: 1808 ASTON AVENUE
SUITE 250
CARLSBAD, CALIFORNIA 92008
Correspondent
Correspondent LATHAM & WATKINS LLP C/O ANGELA M. AMARU
Name:
Correspondent 885 THIRD AVENUE
Address: SUITE 1000
NEW YORK, NY 10022
Domestic Representative - Not Found
Assignment 4 of 4
Conveyance: RELEASE OF SECURITY INTEREST IN TRADEMARKS PREVIOUSLY RECORDED AT REEL/FRAME (4673/0710)
Reel/Frame: 5879/0448 Pages: 10
Date Recorded: Sep. 14, 2016
Supporting assignment-tm-5879-0448.pdf
Documents:
Assignor
Name: KOREA DEVELOPMENT BANK, NEW YORK Execution Date: Jul. 28, 2016
BRANCH, AS ADMINISTRATIVE AGENT
Legal Entity Type: NEW YORK STATE BANKING DEPARTMENT- State or Country KOREA, REPUBLIC OF
LICENSED BRANCH OF A STATE-OWNED Where Organized:
POLICY BANK
Assignee
Name: ACUSHNET COMPANY
Legal Entity Type: CORPORATION State or Country DELAWARE
Where Organized:
Address: 333 BRIDGE STREET
FAIRHAVEN, MASSACHUSETTS 02719
Correspondent
Correspondent AMBER HAREZLAK
Name:
Correspondent 2475 HANOVER STREET
Address: PALO ALTO, CA 94304
Domestic Representative - Not Found
Proceedings
Summary
Number of 2
Proceedings:
Type of Proceeding: Opposition
Proceeding 91234606 Filing Date: May 17, 2017
Case 1:18-cv-12093-JCB Document 1-1 Filed 10/05/18 Page 24 of 94
Number:
Status: Terminated Status Date: Aug 24, 2017
Interlocutory YONG OH (RICHARD) KIM
Attorney:
Defendant
Name: Jeffrey William Woodworth
Correspondent JEFFREY WILLIAM WOODWORTH
Address: 4946 WATT AVE STE 28
NORTH HIGHLANDS CA , 95660-5158
UNITED STATES
Correspondent e- [email protected]
mail:
Associated marks
Serial Registration
Mark Application Status
Number Number
THE ILLEST Abandoned - After Inter-Partes Decision 85428865
Plaintiff(s)
Name: Acushnet Company
Correspondent NANCY H LUTZ
Address: MERCHANT & GOULD PC
80 S 8TH ST STE 3200
MINNEAPOLIS MN , 55402-2215
UNITED STATES
Correspondent e- [email protected] , [email protected] , [email protected] , [email protected]
mail: , [email protected]
Associated marks
Serial Registration
Mark Application Status
Number Number
TITLEIST REGISTERED AND RENEWED 71350879 316118
TITLEIST REGISTERED AND RENEWED 73230709 1155766
TITLEIST REGISTERED AND RENEWED 72376815 934406
TITLEIST REGISTERED AND RENEWED 72383144 933271
TITLEIST REGISTERED AND RENEWED 78781730 3176825
TITLEIST REGISTERED AND RENEWED 73411655 1273662
TITLEIST #1 BALL IN GOLF. REGISTERED AND RENEWED 73756857 1601034
TEAM TITLEIST Registered 85672974 4295551
Prosecution History
Entry Number History Text Date Due Date
1 FILED AND FEE May 17, 2017
2 NOTICE AND TRIAL DATES SENT; ANSWER DUE: May 17, 2017 Jun 26, 2017
3 PENDING, INSTITUTED May 17, 2017
4 NOTICE OF DEFAULT Jul 06, 2017
5 BD DECISION: SUSTAINED Aug 24, 2017
6 TERMINATED Aug 24, 2017
Type of Proceeding: Opposition
Proceeding 91200449 Filing Date: Jun 29, 2011
Number:
Status: Terminated Status Date: Nov 08, 2016
Interlocutory WENDY COHEN
Attorney:
Defendant
Name: Fatlace, LLC aka AKA Illest
Correspondent MARK C ARCENAL
Address: 800 S AMPHLETT BLVD
SAN MATEO CA , 94402
UNITED STATES
Correspondent e- [email protected]
mail:
Case 1:18-cv-12093-JCB Document 1-1 Filed 10/05/18 Page 25 of 94
Associated marks
Serial Registration
Mark Application Status
Number Number
ILLEST Abandoned - After Inter-Partes Decision 77846283
Plaintiff(s)
Name: Acushnet Company
Correspondent NANCY H LUTZ
Address: MERCHANT & GOULD PC
PO BOX 2910
MINNEAPOLIS MN , 55402-0910
UNITED STATES
Correspondent e- [email protected] , [email protected] , [email protected] , [email protected]
mail:
Associated marks
Serial Registration
Mark Application Status
Number Number
TITLEIST REGISTERED AND RENEWED 73230709 1155766
TITLEIST REGISTERED AND RENEWED 71350879 316118
TITLEIST REGISTERED AND RENEWED 72376815 934406
TITLEIST REGISTERED AND RENEWED 72383144 933271
TITLEIST REGISTERED AND RENEWED 78781730 3176825
TITLEIST REGISTERED AND RENEWED 73411655 1273662
TITLEIST #1 BALL IN GOLF. REGISTERED AND RENEWED 73756857 1601034
TITLEIST PERFORMANCE INSTITUTE Cancelled - Section 8 78314310 3111131
Prosecution History
Entry Number History Text Date Due Date
1 FILED AND FEE Jun 29, 2011
2 NOTICE AND TRIAL DATES SENT; ANSWER DUE: Jun 29, 2011 Aug 08, 2011
3 PENDING, INSTITUTED Jun 29, 2011
4 ANSWER Aug 08, 2011
5 P'S MOT TO SUSP PEND SETLMT NEGOTIATIONS Oct 05, 2011
6 SUSPENDED Oct 12, 2011
7 P'S MOT TO SUSP PEND SETLMT NEGOTIATIONS Dec 30, 2011
8 SUSPENDED Jan 05, 2012
9 P'S MOT TO SUSP PEND SETLMT NEGOTIATIONS Feb 27, 2012
10 SUSPENDED Mar 01, 2012
11 P'S MOT TO SUSP PEND SETLMT NEGOTIATIONS Apr 27, 2012
12 SUSPENDED May 01, 2012
13 P'S MOT TO SUSP PEND SETLMT NEGOTIATIONS Jul 26, 2012
14 SUSPENDED Jul 31, 2012
15 P'S MOT TO SUSP PEND SETLMT NEGOTIATIONS Oct 24, 2012
16 SUSPENDED Nov 07, 2012
17 P'S MOT TO SUSP PEND SETLMT NEGOTIATIONS Dec 26, 2012
18 SUSPENDED Jan 08, 2013
19 P'S MOT TO SUSP PEND SETLMT NEGOTIATIONS Feb 22, 2013
20 SUSPENDED Mar 05, 2013
21 P MOT TO SUSP W/ CONSENT PEND SETTL NEGOTIATIONS Apr 23, 2013
22 SUSPENDED Apr 25, 2013
23 P MOT TO SUSP W/ CONSENT PEND SETTL NEGOTIATIONS Jun 24, 2013
24 SUSPENDED Jun 26, 2013
25 P MOT TO SUSP W/ CONSENT PEND SETTL NEGOTIATIONS Aug 22, 2013
26 SUSPENDED Aug 28, 2013
27 P MOT TO SUSP W/ CONSENT PEND SETTL NEGOTIATIONS Oct 23, 2013
28 SUSPENDED Oct 30, 2013
29 P MOT TO SUSP W/ CONSENT PEND SETTL NEGOTIATIONS Jan 22, 2014
30 SUSPENDED Feb 26, 2014
Case 1:18-cv-12093-JCB Document 1-1 Filed 10/05/18 Page 26 of 94
Generated on: This page was generated by TSDR on 2018-10-04 15:39:26 EDT
Mark: TITLEIST
Mark Information
Mark Literal TITLEIST
Elements:
Standard Character Yes. The mark consists of standard characters without claim to any particular font style, size, or color.
Claim:
Mark Drawing 4 - STANDARD CHARACTER MARK
Type:
For: headwear
International 025 - Primary Class U.S Class(es): 022, 039
Class(es):
Class Status: ACTIVE
Basis: 1(a)
First Use: Jan. 1970 Use in Commerce: Jan. 1970
Attorney/Correspondence Information
Attorney of Record - None
Correspondent
Correspondent ACUSHNET COMPANY
Name/Address: 333 BRIDGE STREET
FAIRHAVEN, MASSACHUSETTS 02719
UNITED STATES
Correspondent e- [email protected] andrea_sorell@ac Correspondent e- Yes
mail: ushnetgolf.com [email protected] mail Authorized:
Domestic Representative - Not Found
Prosecution History
Proceeding
Date Description
Number
Jan. 28, 2017 NOTICE OF ACCEPTANCE OF SEC. 8 & 9 - E-MAILED
Jan. 28, 2017 REGISTERED AND RENEWED (FIRST RENEWAL - 10 YRS) 77315
Jan. 28, 2017 REGISTERED - SEC. 8 (10-YR) ACCEPTED/SEC. 9 GRANTED 77315
Jan. 28, 2017 CASE ASSIGNED TO POST REGISTRATION PARALEGAL 77315
Nov. 21, 2016 TEAS SECTION 8 & 9 RECEIVED
Nov. 21, 2016 TEAS CHANGE OF CORRESPONDENCE RECEIVED
Nov. 18, 2016 ATTORNEY/DOM.REP.REVOKED AND/OR APPOINTED
Nov. 18, 2016 TEAS REVOKE/APP/CHANGE ADDR OF ATTY/DOM REP RECEIVED
Sep. 28, 2016 ASSIGNMENT OF OWNERSHIP NOT UPDATED AUTOMATICALLY
Nov. 28, 2015 COURTESY REMINDER - SEC. 8 (10-YR)/SEC. 9 E-MAILED
Dec. 01, 2012 NOTICE OF ACCEPTANCE OF SEC. 8 & 15 - E-MAILED
Dec. 01, 2012 REGISTERED - SEC. 8 (6-YR) ACCEPTED & SEC. 15 ACK. 77315
Dec. 01, 2012 CASE ASSIGNED TO POST REGISTRATION PARALEGAL 77315
Nov. 05, 2012 TEAS SECTION 8 & 15 RECEIVED
Nov. 05, 2012 TEAS CHANGE OF CORRESPONDENCE RECEIVED
Nov. 28, 2006 REGISTERED-PRINCIPAL REGISTER
Sep. 12, 2006 PUBLISHED FOR OPPOSITION
Aug. 23, 2006 NOTICE OF PUBLICATION
Jul. 20, 2006 LAW OFFICE PUBLICATION REVIEW COMPLETED 70138
Jul. 14, 2006 ASSIGNED TO LIE 70138
Jul. 13, 2006 APPROVED FOR PUB - PRINCIPAL REGISTER
Jul. 11, 2006 TEAS/EMAIL CORRESPONDENCE ENTERED 88889
Jul. 05, 2006 CORRESPONDENCE RECEIVED IN LAW OFFICE 88889
Jul. 05, 2006 TEAS RESPONSE TO OFFICE ACTION RECEIVED
Jun. 22, 2006 NON-FINAL ACTION MAILED
Jun. 22, 2006 NON-FINAL ACTION WRITTEN 76635
Jun. 22, 2006 ASSIGNED TO EXAMINER 76635
May 05, 2006 TEAS CHANGE OF CORRESPONDENCE RECEIVED
Jan. 05, 2006 NEW APPLICATION ENTERED IN TRAM
Proceedings
Summary
Number of 2
Proceedings:
Type of Proceeding: Opposition
Proceeding 91234606 Filing Date: May 17, 2017
Number:
Status: Terminated Status Date: Aug 24, 2017
Interlocutory YONG OH (RICHARD) KIM
Attorney:
Defendant
Name: Jeffrey William Woodworth
Correspondent JEFFREY WILLIAM WOODWORTH
Address: 4946 WATT AVE STE 28
NORTH HIGHLANDS CA , 95660-5158
UNITED STATES
Correspondent e- [email protected]
mail:
Associated marks
Serial Registration
Mark Application Status
Number Number
THE ILLEST Abandoned - After Inter-Partes Decision 85428865
Plaintiff(s)
Name: Acushnet Company
Correspondent NANCY H LUTZ
Address: MERCHANT & GOULD PC
80 S 8TH ST STE 3200
Case 1:18-cv-12093-JCB Document 1-1 Filed 10/05/18 Page 31 of 94
MINNEAPOLIS MN , 55402-2215
UNITED STATES
Correspondent e- [email protected] , [email protected] , [email protected] , [email protected]
mail: , [email protected]
Associated marks
Serial Registration
Mark Application Status
Number Number
TITLEIST REGISTERED AND RENEWED 71350879 316118
TITLEIST REGISTERED AND RENEWED 73230709 1155766
TITLEIST REGISTERED AND RENEWED 72376815 934406
TITLEIST REGISTERED AND RENEWED 72383144 933271
TITLEIST REGISTERED AND RENEWED 78781730 3176825
TITLEIST REGISTERED AND RENEWED 73411655 1273662
TITLEIST #1 BALL IN GOLF. REGISTERED AND RENEWED 73756857 1601034
TEAM TITLEIST Registered 85672974 4295551
Prosecution History
Entry Number History Text Date Due Date
1 FILED AND FEE May 17, 2017
2 NOTICE AND TRIAL DATES SENT; ANSWER DUE: May 17, 2017 Jun 26, 2017
3 PENDING, INSTITUTED May 17, 2017
4 NOTICE OF DEFAULT Jul 06, 2017
5 BD DECISION: SUSTAINED Aug 24, 2017
6 TERMINATED Aug 24, 2017
Type of Proceeding: Opposition
Proceeding 91200449 Filing Date: Jun 29, 2011
Number:
Status: Terminated Status Date: Nov 08, 2016
Interlocutory WENDY COHEN
Attorney:
Defendant
Name: Fatlace, LLC aka AKA Illest
Correspondent MARK C ARCENAL
Address: 800 S AMPHLETT BLVD
SAN MATEO CA , 94402
UNITED STATES
Correspondent e- [email protected]
mail:
Associated marks
Serial Registration
Mark Application Status
Number Number
ILLEST Abandoned - After Inter-Partes Decision 77846283
Plaintiff(s)
Name: Acushnet Company
Correspondent NANCY H LUTZ
Address: MERCHANT & GOULD PC
PO BOX 2910
MINNEAPOLIS MN , 55402-0910
UNITED STATES
Correspondent e- [email protected] , [email protected] , [email protected] , [email protected]
mail:
Associated marks
Serial Registration
Mark Application Status
Number Number
TITLEIST REGISTERED AND RENEWED 73230709 1155766
TITLEIST REGISTERED AND RENEWED 71350879 316118
TITLEIST REGISTERED AND RENEWED 72376815 934406
TITLEIST REGISTERED AND RENEWED 72383144 933271
TITLEIST
Case 1:18-cv-12093-JCB Document 1-1 Filed 10/05/18 Page 32 of 94
Generated on: This page was generated by TSDR on 2018-10-04 15:40:26 EDT
Mark: TITLEIST
Mark Information
Mark Literal TITLEIST
Elements:
Standard Character No
Claim:
Mark Drawing 5 - AN ILLUSTRATION DRAWING WITH WORD(S) /LETTER(S)/ NUMBER(S) INSTYLIZED FORM
Type:
For: Golf Equipment-Namely, Golf Balls, Golf Clubs and Golf Bags
International 028 - Primary Class U.S Class(es): 022
Class(es):
Class Status: ACTIVE
Basis: 1(a)
First Use: Dec. 20, 1933 Use in Commerce: Dec. 1933
Attorney/Correspondence Information
Attorney of Record - None
Correspondent
Correspondent LISA ROGAN
Name/Address: ACUSHNET COMPANY
333 BRIDGE STREET
FAIRHAVEN, MASSACHUSETTS 02719
UNITED STATES
Phone: 508-979-2000
Correspondent e- [email protected] Correspondent e- Yes
mail: mail Authorized:
Domestic Representative - Not Found
Prosecution History
Proceeding
Date Description
Number
Dec. 28, 2017 NOTICE OF SUIT
Nov. 15, 2017 NOTICE OF SUIT
Nov. 06, 2017 NOTICE OF SUIT
Jun. 21, 2017 NOTICE OF SUIT
Jun. 21, 2017 NOTICE OF SUIT
Sep. 28, 2016 ASSIGNMENT OF OWNERSHIP NOT UPDATED AUTOMATICALLY
Nov. 26, 2013 NOTICE OF SUIT
Feb. 06, 2013 NOTICE OF SUIT
Jun. 01, 2011 REGISTERED AND RENEWED (SECOND RENEWAL - 10 YRS) 64591
Jun. 01, 2011 REGISTERED - SEC. 8 (10-YR) ACCEPTED/SEC. 9 GRANTED
Jun. 01, 2011 CASE ASSIGNED TO POST REGISTRATION PARALEGAL 64591
May 04, 2011 TEAS SECTION 8 & 9 RECEIVED
Mar. 03, 2010 REVIEW OF CORRESPONDENCE COMPLETE 67657
Mar. 02, 2010 CASE ASSIGNED TO POST REGISTRATION PARALEGAL 67657
Mar. 04, 2008 CASE FILE IN TICRS
May 05, 2006 TEAS CHANGE OF CORRESPONDENCE RECEIVED
Mar. 04, 2004 PAPER RECEIVED
Jan. 21, 2004 TEAS CHANGE OF CORRESPONDENCE RECEIVED
Aug. 20, 2001 REGISTERED AND RENEWED (FIRST RENEWAL - 10 YRS)
Aug. 20, 2001 REGISTERED - SEC. 8 (10-YR) ACCEPTED/SEC. 9 GRANTED
May 25, 2001 REGISTERED - COMBINED SECTION 8 (10-YR) & SEC. 9 FILED
Nov. 03, 1987 REGISTERED - SEC. 8 (6-YR) ACCEPTED & SEC. 15 ACK.
Apr. 15, 1987 REGISTERED - SEC. 8 (6-YR) & SEC. 15 FILED
May 26, 1981 REGISTERED-PRINCIPAL REGISTER
Mar. 03, 1981 PUBLISHED FOR OPPOSITION
Dec. 09, 1980 NOTICE OF PUBLICATION
Aug. 06, 1980 APPROVED FOR PUB - PRINCIPAL REGISTER
Mar. 11, 1980 ASSIGNED TO EXAMINER
Dec. 20, 1979 ASSIGNED TO EXAMINER
Proceedings
Summary
Number of 2
Proceedings:
Type of Proceeding: Opposition
Proceeding 91234606 Filing Date: May 17, 2017
Number:
Status: Terminated Status Date: Aug 24, 2017
Interlocutory YONG OH (RICHARD) KIM
Attorney:
Defendant
Name: Jeffrey William Woodworth
Correspondent JEFFREY WILLIAM WOODWORTH
Address: 4946 WATT AVE STE 28
NORTH HIGHLANDS CA , 95660-5158
UNITED STATES
Correspondent e- [email protected]
mail:
Associated marks
Serial Registration
Mark Application Status
Number Number
THE ILLEST Abandoned - After Inter-Partes Decision 85428865
Plaintiff(s)
Name: Acushnet Company
Correspondent NANCY H LUTZ
Address: MERCHANT & GOULD PC
80 S 8TH ST STE 3200
MINNEAPOLIS MN , 55402-2215
UNITED STATES
Correspondent e- [email protected] , [email protected] , [email protected] , [email protected]
mail: , [email protected]
Case 1:18-cv-12093-JCB Document 1-1 Filed 10/05/18 Page 38 of 94
Associated marks
Serial Registration
Mark Application Status
Number Number
TITLEIST REGISTERED AND RENEWED 71350879 316118
TITLEIST REGISTERED AND RENEWED 73230709 1155766
TITLEIST REGISTERED AND RENEWED 72376815 934406
TITLEIST REGISTERED AND RENEWED 72383144 933271
TITLEIST REGISTERED AND RENEWED 78781730 3176825
TITLEIST REGISTERED AND RENEWED 73411655 1273662
TITLEIST #1 BALL IN GOLF. REGISTERED AND RENEWED 73756857 1601034
TEAM TITLEIST Registered 85672974 4295551
Prosecution History
Entry Number History Text Date Due Date
1 FILED AND FEE May 17, 2017
2 NOTICE AND TRIAL DATES SENT; ANSWER DUE: May 17, 2017 Jun 26, 2017
3 PENDING, INSTITUTED May 17, 2017
4 NOTICE OF DEFAULT Jul 06, 2017
5 BD DECISION: SUSTAINED Aug 24, 2017
6 TERMINATED Aug 24, 2017
Type of Proceeding: Opposition
Proceeding 91200449 Filing Date: Jun 29, 2011
Number:
Status: Terminated Status Date: Nov 08, 2016
Interlocutory WENDY COHEN
Attorney:
Defendant
Name: Fatlace, LLC aka AKA Illest
Correspondent MARK C ARCENAL
Address: 800 S AMPHLETT BLVD
SAN MATEO CA , 94402
UNITED STATES
Correspondent e- [email protected]
mail:
Associated marks
Serial Registration
Mark Application Status
Number Number
ILLEST Abandoned - After Inter-Partes Decision 77846283
Plaintiff(s)
Name: Acushnet Company
Correspondent NANCY H LUTZ
Address: MERCHANT & GOULD PC
PO BOX 2910
MINNEAPOLIS MN , 55402-0910
UNITED STATES
Correspondent e- [email protected] , [email protected] , [email protected] , [email protected]
mail:
Associated marks
Serial Registration
Mark Application Status
Number Number
TITLEIST REGISTERED AND RENEWED 73230709 1155766
TITLEIST REGISTERED AND RENEWED 71350879 316118
TITLEIST REGISTERED AND RENEWED 72376815 934406
TITLEIST REGISTERED AND RENEWED 72383144 933271
TITLEIST REGISTERED AND RENEWED 78781730 3176825
TITLEIST REGISTERED AND RENEWED 73411655 1273662
TITLEIST #1 BALL IN GOLF. REGISTERED AND RENEWED 73756857 1601034
TITLEIST PERFORMANCE INSTITUTE Cancelled - Section 8 78314310 3111131
Case 1:18-cv-12093-JCB Document 1-1 Filed 10/05/18 Page 39 of 94
Prosecution History
Entry Number History Text Date Due Date
1 FILED AND FEE Jun 29, 2011
2 NOTICE AND TRIAL DATES SENT; ANSWER DUE: Jun 29, 2011 Aug 08, 2011
3 PENDING, INSTITUTED Jun 29, 2011
4 ANSWER Aug 08, 2011
5 P'S MOT TO SUSP PEND SETLMT NEGOTIATIONS Oct 05, 2011
6 SUSPENDED Oct 12, 2011
7 P'S MOT TO SUSP PEND SETLMT NEGOTIATIONS Dec 30, 2011
8 SUSPENDED Jan 05, 2012
9 P'S MOT TO SUSP PEND SETLMT NEGOTIATIONS Feb 27, 2012
10 SUSPENDED Mar 01, 2012
11 P'S MOT TO SUSP PEND SETLMT NEGOTIATIONS Apr 27, 2012
12 SUSPENDED May 01, 2012
13 P'S MOT TO SUSP PEND SETLMT NEGOTIATIONS Jul 26, 2012
14 SUSPENDED Jul 31, 2012
15 P'S MOT TO SUSP PEND SETLMT NEGOTIATIONS Oct 24, 2012
16 SUSPENDED Nov 07, 2012
17 P'S MOT TO SUSP PEND SETLMT NEGOTIATIONS Dec 26, 2012
18 SUSPENDED Jan 08, 2013
19 P'S MOT TO SUSP PEND SETLMT NEGOTIATIONS Feb 22, 2013
20 SUSPENDED Mar 05, 2013
21 P MOT TO SUSP W/ CONSENT PEND SETTL NEGOTIATIONS Apr 23, 2013
22 SUSPENDED Apr 25, 2013
23 P MOT TO SUSP W/ CONSENT PEND SETTL NEGOTIATIONS Jun 24, 2013
24 SUSPENDED Jun 26, 2013
25 P MOT TO SUSP W/ CONSENT PEND SETTL NEGOTIATIONS Aug 22, 2013
26 SUSPENDED Aug 28, 2013
27 P MOT TO SUSP W/ CONSENT PEND SETTL NEGOTIATIONS Oct 23, 2013
28 SUSPENDED Oct 30, 2013
29 P MOT TO SUSP W/ CONSENT PEND SETTL NEGOTIATIONS Jan 22, 2014
30 SUSPENDED Feb 26, 2014
31 P MOT TO SUSP W/ CONSENT PEND SETTL NEGOTIATIONS Apr 21, 2014
32 SUSPENDED Jul 02, 2014
33 P MOT TO SUSP W/ CONSENT PEND SETTL NEGOTIATIONS Jul 21, 2014
34 SUSPENDED Jul 31, 2014
35 P CHANGE OF CORRESP ADDRESS Sep 02, 2014
36 P MOT TO SUSP W/ CONSENT PEND SETTL NEGOTIATIONS Oct 20, 2014
37 SUSPENDED Oct 24, 2014
38 P MOT TO SUSP W/ CONSENT PEND SETTL NEGOTIATIONS Nov 18, 2014
39 SUSPENDED Nov 24, 2014
40 P MOT TO SUSP W/ CONSENT PEND SETTL NEGOTIATIONS Jan 16, 2015
41 SUSPENDED Jan 26, 2015
42 SUSPENDED Jan 26, 2015
43 P CHANGE OF CORRESP ADDRESS Mar 16, 2015
44 P MOT TO SUSP W/ CONSENT PEND SETTL NEGOTIATIONS Mar 18, 2015
45 P MOT TO SUSP W/ CONSENT PEND SETTL NEGOTIATIONS Mar 18, 2015
46 SUSPENDED Mar 26, 2015
47 P MOT TO SUSP W/ CONSENT PEND SETTL NEGOTIATIONS May 15, 2015
48 SUSPENDED May 23, 2015
49 P MOT TO SUSP W/ CONSENT PEND SETTL NEGOTIATIONS Jul 15, 2015
50 SUSPENDED Jul 27, 2015
51 P MOT TO SUSP W/ CONSENT PEND SETTL NEGOTIATIONS Sep 14, 2015
52 SUSPENDED Sep 22, 2015
53 P MOT TO SUSP W/ CONSENT PEND SETTL NEGOTIATIONS Dec 11, 2015
Case 1:18-cv-12093-JCB Document 1-1 Filed 10/05/18 Page 40 of 94
Generated on: This page was generated by TSDR on 2018-10-04 15:41:15 EDT
Mark: TITLEIST
Mark Information
Mark Literal TITLEIST
Elements:
Standard Character No
Claim:
Mark Drawing 5 - AN ILLUSTRATION DRAWING WITH WORD(S) /LETTER(S)/ NUMBER(S) INSTYLIZED FORM
Type:
Attorney/Correspondence Information
Attorney of Record - None
Correspondent
Correspondent Lisa Rogan
Name/Address: Acushnet Company
333 BRIDGE STREET
FAIRHAVEN, MASSACHUSETTS 02719
UNITED STATES
Phone: 508-979-2000
Correspondent e- [email protected] sean_wiggins@acush Correspondent e- Yes
mail: netgolf.com [email protected] lisa mail Authorized:
[email protected]
Domestic Representative - Not Found
Prosecution History
Proceeding
Date Description
Number
Sep. 28, 2016 ASSIGNMENT OF OWNERSHIP NOT UPDATED AUTOMATICALLY
May 29, 2014 NOTICE OF SUIT
Mar. 04, 2014 NOTICE OF ACCEPTANCE OF SEC. 8 & 9 - E-MAILED
Mar. 04, 2014 REGISTERED AND RENEWED (SECOND RENEWAL - 10 YRS) 73376
Mar. 04, 2014 REGISTERED - SEC. 8 (10-YR) ACCEPTED/SEC. 9 GRANTED 73376
Mar. 03, 2014 REGISTERED - COMBINED SECTION 8 (10-YR) & SEC. 9 FILED 73376
Mar. 03, 2014 TEAS SECTION 8 & 9 RECEIVED
Mar. 03, 2014 TEAS CHANGE OF CORRESPONDENCE RECEIVED
Dec. 02, 2013 NOTICE OF SUIT
May 06, 2008 CASE FILE IN TICRS
May 05, 2006 TEAS CHANGE OF CORRESPONDENCE RECEIVED
Jun. 15, 2005 FAX SENT
Nov. 05, 2004 FAX SENT
Nov. 03, 2004 FAX SENT
Apr. 23, 2004 REGISTERED AND RENEWED (FIRST RENEWAL - 10 YRS)
Apr. 23, 2004 REGISTERED - SEC. 8 (10-YR) ACCEPTED/SEC. 9 GRANTED
Apr. 05, 2004 RESPONSE RECEIVED TO POST REG. ACTION - SEC. 8 & 9
Mar. 04, 2004 PAPER RECEIVED
Jan. 21, 2004 TEAS CHANGE OF CORRESPONDENCE RECEIVED
Jan. 09, 2004 POST REGISTRATION ACTION MAILED - SEC. 8 & 9
Sep. 29, 2003 REGISTERED - COMBINED SECTION 8 (10-YR) & SEC. 9 FILED
Feb. 08, 1990 REGISTERED - SEC. 8 (6-YR) ACCEPTED & SEC. 15 ACK.
Nov. 20, 1989 REGISTERED - SEC. 8 (6-YR) & SEC. 15 FILED
Apr. 10, 1984 REGISTERED-PRINCIPAL REGISTER
Jan. 17, 1984 PUBLISHED FOR OPPOSITION
Nov. 30, 1983 NOTICE OF PUBLICATION
Nov. 29, 1983 NOTICE OF PUBLICATION
Nov. 28, 1983 NOTICE OF PUBLICATION
Nov. 25, 1983 NOTICE OF PUBLICATION
Case 1:18-cv-12093-JCB Document 1-1 Filed 10/05/18 Page 43 of 94
Proceedings
Summary
Number of 2
Proceedings:
Type of Proceeding: Opposition
Proceeding 91234606 Filing Date: May 17, 2017
Number:
Status: Terminated Status Date: Aug 24, 2017
Interlocutory YONG OH (RICHARD) KIM
Attorney:
Defendant
Name: Jeffrey William Woodworth
Correspondent JEFFREY WILLIAM WOODWORTH
Address: 4946 WATT AVE STE 28
NORTH HIGHLANDS CA , 95660-5158
UNITED STATES
Correspondent e- [email protected]
mail:
Associated marks
Serial Registration
Case 1:18-cv-12093-JCB Document 1-1 Filed 10/05/18 Page 45 of 94
Serial Registration
Mark Application Status
Number Number
TITLEIST REGISTERED AND RENEWED 73230709 1155766
TITLEIST REGISTERED AND RENEWED 71350879 316118
TITLEIST REGISTERED AND RENEWED 72376815 934406
TITLEIST REGISTERED AND RENEWED 72383144 933271
TITLEIST REGISTERED AND RENEWED 78781730 3176825
TITLEIST REGISTERED AND RENEWED 73411655 1273662
TITLEIST #1 BALL IN GOLF. REGISTERED AND RENEWED 73756857 1601034
TITLEIST PERFORMANCE INSTITUTE Cancelled - Section 8 78314310 3111131
Prosecution History
Entry Number History Text Date Due Date
1 FILED AND FEE Jun 29, 2011
2 NOTICE AND TRIAL DATES SENT; ANSWER DUE: Jun 29, 2011 Aug 08, 2011
3 PENDING, INSTITUTED Jun 29, 2011
4 ANSWER Aug 08, 2011
5 P'S MOT TO SUSP PEND SETLMT NEGOTIATIONS Oct 05, 2011
6 SUSPENDED Oct 12, 2011
7 P'S MOT TO SUSP PEND SETLMT NEGOTIATIONS Dec 30, 2011
8 SUSPENDED Jan 05, 2012
9 P'S MOT TO SUSP PEND SETLMT NEGOTIATIONS Feb 27, 2012
10 SUSPENDED Mar 01, 2012
11 P'S MOT TO SUSP PEND SETLMT NEGOTIATIONS Apr 27, 2012
12 SUSPENDED May 01, 2012
13 P'S MOT TO SUSP PEND SETLMT NEGOTIATIONS Jul 26, 2012
14 SUSPENDED Jul 31, 2012
15 P'S MOT TO SUSP PEND SETLMT NEGOTIATIONS Oct 24, 2012
16 SUSPENDED Nov 07, 2012
17 P'S MOT TO SUSP PEND SETLMT NEGOTIATIONS Dec 26, 2012
18 SUSPENDED Jan 08, 2013
19 P'S MOT TO SUSP PEND SETLMT NEGOTIATIONS Feb 22, 2013
20 SUSPENDED Mar 05, 2013
21 P MOT TO SUSP W/ CONSENT PEND SETTL NEGOTIATIONS Apr 23, 2013
22 SUSPENDED Apr 25, 2013
23 P MOT TO SUSP W/ CONSENT PEND SETTL NEGOTIATIONS Jun 24, 2013
24 SUSPENDED Jun 26, 2013
25 P MOT TO SUSP W/ CONSENT PEND SETTL NEGOTIATIONS Aug 22, 2013
26 SUSPENDED Aug 28, 2013
27 P MOT TO SUSP W/ CONSENT PEND SETTL NEGOTIATIONS Oct 23, 2013
28 SUSPENDED Oct 30, 2013
29 P MOT TO SUSP W/ CONSENT PEND SETTL NEGOTIATIONS Jan 22, 2014
30 SUSPENDED Feb 26, 2014
31 P MOT TO SUSP W/ CONSENT PEND SETTL NEGOTIATIONS Apr 21, 2014
32 SUSPENDED Jul 02, 2014
33 P MOT TO SUSP W/ CONSENT PEND SETTL NEGOTIATIONS Jul 21, 2014
34 SUSPENDED Jul 31, 2014
35 P CHANGE OF CORRESP ADDRESS Sep 02, 2014
36 P MOT TO SUSP W/ CONSENT PEND SETTL NEGOTIATIONS Oct 20, 2014
37 SUSPENDED Oct 24, 2014
38 P MOT TO SUSP W/ CONSENT PEND SETTL NEGOTIATIONS Nov 18, 2014
39 SUSPENDED Nov 24, 2014
40 P MOT TO SUSP W/ CONSENT PEND SETTL NEGOTIATIONS Jan 16, 2015
41 SUSPENDED Jan 26, 2015
42 SUSPENDED Jan 26, 2015
43 P CHANGE OF CORRESP ADDRESS Mar 16, 2015
Case 1:18-cv-12093-JCB Document 1-1 Filed 10/05/18 Page 47 of 94
Generated on: This page was generated by TSDR on 2018-10-04 15:42:04 EDT
Mark: PRO V1
Mark Information
Mark Literal PRO V1
Elements:
Standard Character No
Claim:
Mark Drawing 1 - TYPESET WORD(S) /LETTER(S) /NUMBER(S)
Type:
Attorney/Correspondence Information
Attorney of Record
Attorney Name: Peter D. Vogl Docket Number: 6202-777-999
Correspondent
Correspondent Lisa Rogan
Name/Address: ACUSHNET COMPANY
333 Bridge Street
Fairhaven, MASSACHUSETTS 02719
UNITED STATES
Phone: 508-979-2000
Correspondent e- [email protected] sean_wiggins@acush Correspondent e- Yes
mail: netgolf.com [email protected] lisa mail Authorized:
[email protected]
Domestic Representative - Not Found
Prosecution History
Proceeding
Date Description
Number
Sep. 28, 2016 ASSIGNMENT OF OWNERSHIP NOT UPDATED AUTOMATICALLY
Sep. 12, 2013 NOTICE OF ACCEPTANCE OF SEC. 8 & 9 - E-MAILED
Sep. 12, 2013 REGISTERED AND RENEWED (FIRST RENEWAL - 10 YRS) 69471
Sep. 12, 2013 REGISTERED - SEC. 8 (10-YR) ACCEPTED/SEC. 9 GRANTED 69471
Sep. 04, 2013 REGISTERED - COMBINED SECTION 8 (10-YR) & SEC. 9 FILED 69471
Sep. 12, 2013 CASE ASSIGNED TO POST REGISTRATION PARALEGAL 69471
Sep. 04, 2013 TEAS SECTION 8 & 9 RECEIVED
Sep. 04, 2013 TEAS CHANGE OF CORRESPONDENCE RECEIVED
Jan. 10, 2010 REGISTERED - SEC. 8 (6-YR) ACCEPTED & SEC. 15 ACK. 67723
Jan. 09, 2010 CASE ASSIGNED TO POST REGISTRATION PARALEGAL 67723
Jan. 06, 2010 TEAS SECTION 8 & 15 RECEIVED
Dec. 07, 2009 REVIEW OF CORRESPONDENCE COMPLETE 76293
Dec. 07, 2009 CASE ASSIGNED TO POST REGISTRATION PARALEGAL 76293
May 05, 2006 TEAS CHANGE OF CORRESPONDENCE RECEIVED
Mar. 04, 2004 PAPER RECEIVED
Jan. 21, 2004 TEAS CHANGE OF CORRESPONDENCE RECEIVED
Jan. 20, 2004 REGISTERED-PRINCIPAL REGISTER
Nov. 20, 2003 ALLOWED PRINCIPAL REGISTER - SOU ACCEPTED
Nov. 18, 2003 ASSIGNED TO EXAMINER 59851
Nov. 17, 2003 CASE FILE IN TICRS
Nov. 07, 2003 STATEMENT OF USE PROCESSING COMPLETE
Oct. 14, 2003 USE AMENDMENT FILED
Oct. 14, 2003 PAPER RECEIVED
Apr. 15, 2003 NOA MAILED - SOU REQUIRED FROM APPLICANT
Aug. 21, 2002 ASSIGNED TO EXAMINER 59851
Jan. 07, 2002 EXTENSION OF TIME TO OPPOSE RECEIVED
Dec. 18, 2001 PUBLISHED FOR OPPOSITION
Nov. 28, 2001 NOTICE OF PUBLICATION
Aug. 13, 2001 APPROVED FOR PUB - PRINCIPAL REGISTER
May 09, 2001 CORRESPONDENCE RECEIVED IN LAW OFFICE
Apr. 03, 2001 NON-FINAL ACTION MAILED
Case 1:18-cv-12093-JCB Document 1-1 Filed 10/05/18 Page 50 of 94
SUITE 250
CARLSBAD, CALIFORNIA 92008
Correspondent
Correspondent LATHAM & WATKINS LLP C/O ANGELA M. AMARU
Name:
Correspondent 885 THIRD AVENUE
Address: SUITE 1000
NEW YORK, NY 10022
Domestic Representative - Not Found
Assignment 3 of 3
Conveyance: RELEASE OF SECURITY INTEREST IN TRADEMARKS PREVIOUSLY RECORDED AT REEL/FRAME (4673/0710)
Reel/Frame: 5879/0448 Pages: 10
Date Recorded: Sep. 14, 2016
Supporting assignment-tm-5879-0448.pdf
Documents:
Assignor
Name: KOREA DEVELOPMENT BANK, NEW YORK Execution Date: Jul. 28, 2016
BRANCH, AS ADMINISTRATIVE AGENT
Legal Entity Type: NEW YORK STATE BANKING DEPARTMENT- State or Country KOREA, REPUBLIC OF
LICENSED BRANCH OF A STATE-OWNED Where Organized:
POLICY BANK
Assignee
Name: ACUSHNET COMPANY
Legal Entity Type: CORPORATION State or Country DELAWARE
Where Organized:
Address: 333 BRIDGE STREET
FAIRHAVEN, MASSACHUSETTS 02719
Correspondent
Correspondent AMBER HAREZLAK
Name:
Correspondent 2475 HANOVER STREET
Address: PALO ALTO, CA 94304
Domestic Representative - Not Found
Case 1:18-cv-12093-JCB Document 1-1 Filed 10/05/18 Page 52 of 94
Generated on: This page was generated by TSDR on 2018-10-04 15:42:50 EDT
Mark: TITLEIST #1 BALL IN GOLF.
Mark Information
Mark Literal TITLEIST #1 BALL IN GOLF.
Elements:
Standard Character No
Claim:
Mark Drawing 5 - AN ILLUSTRATION DRAWING WITH WORD(S) /LETTER(S)/ NUMBER(S) INSTYLIZED FORM
Type:
Acquired In part
Distinctiveness
Claim:
Distinctiveness AS TO THE WORDS "#1 BALL IN GOLF"
Limitation
Statement:
Attorney/Correspondence Information
Attorney of Record
Attorney Name: PETER D. VOGL
Correspondent
Correspondent NANCY H LUTZ
Name/Address: KELLEY DRYE & WARREN LLP
3050 K ST NW STE 400
WASHINGTON, DISTRICT OF COLUMBIA 20007
UNITED STATES
Phone: 202-342-8851 Fax: 202-342-8451
Domestic Representative - Not Found
Prosecution History
Proceeding
Date Description
Number
Sep. 28, 2016 ASSIGNMENT OF OWNERSHIP NOT UPDATED AUTOMATICALLY
Apr. 26, 2010 REGISTERED AND RENEWED (SECOND RENEWAL - 10 YRS) 75184
Apr. 26, 2010 REGISTERED - SEC. 8 (10-YR) ACCEPTED/SEC. 9 GRANTED
Apr. 22, 2010 CASE ASSIGNED TO POST REGISTRATION PARALEGAL 75184
Apr. 20, 2010 TEAS SECTION 8 & 9 RECEIVED
Apr. 07, 2010 REVIEW OF CORRESPONDENCE COMPLETE 77315
Apr. 06, 2010 CASE ASSIGNED TO POST REGISTRATION PARALEGAL 77315
Dec. 05, 2008 CASE FILE IN TICRS
May 05, 2006 TEAS CHANGE OF CORRESPONDENCE RECEIVED
Mar. 04, 2004 PAPER RECEIVED
Jan. 21, 2004 TEAS CHANGE OF CORRESPONDENCE RECEIVED
Jan. 24, 2001 REGISTERED AND RENEWED (FIRST RENEWAL - 10 YRS)
Jan. 24, 2001 REGISTERED - SEC. 8 (10-YR) ACCEPTED/SEC. 9 GRANTED
Jun. 12, 2000 REGISTERED - COMBINED SECTION 8 (10-YR) & SEC. 9 FILED
Jul. 25, 1996 REGISTERED - SEC. 8 (6-YR) ACCEPTED & SEC. 15 ACK.
Apr. 26, 1996 REGISTERED - SEC. 8 (6-YR) & SEC. 15 FILED
Jun. 12, 1990 REGISTERED-PRINCIPAL REGISTER
Mar. 20, 1990 PUBLISHED FOR OPPOSITION
Feb. 17, 1990 NOTICE OF PUBLICATION
Dec. 21, 1989 APPROVED FOR PUB - PRINCIPAL REGISTER
Oct. 23, 1989 CORRESPONDENCE RECEIVED IN LAW OFFICE
Aug. 30, 1989 NON-FINAL ACTION MAILED
Aug. 24, 1989 ASSIGNED TO EXAMINER 67516
Jul. 17, 1989 CORRESPONDENCE RECEIVED IN LAW OFFICE
Jan. 13, 1989 NON-FINAL ACTION MAILED
Dec. 15, 1988 ASSIGNED TO EXAMINER 59580
Proceedings
Summary
Number of 3
Proceedings:
Type of Proceeding: Opposition
Proceeding 91234606 Filing Date: May 17, 2017
Number:
Status: Terminated Status Date: Aug 24, 2017
Interlocutory YONG OH (RICHARD) KIM
Attorney:
Defendant
Name: Jeffrey William Woodworth
Correspondent JEFFREY WILLIAM WOODWORTH
Address: 4946 WATT AVE STE 28
NORTH HIGHLANDS CA , 95660-5158
UNITED STATES
Correspondent e- [email protected]
mail:
Associated marks
Serial Registration
Mark Application Status
Number Number
THE ILLEST Abandoned - After Inter-Partes Decision 85428865
Plaintiff(s)
Name: Acushnet Company
Correspondent NANCY H LUTZ
Address: MERCHANT & GOULD PC
80 S 8TH ST STE 3200
MINNEAPOLIS MN , 55402-2215
UNITED STATES
Case 1:18-cv-12093-JCB Document 1-1 Filed 10/05/18 Page 56 of 94
Generated on: This page was generated by TSDR on 2018-10-04 15:43:40 EDT
Mark: #1 BALL IN GOLF
Mark Information
Mark Literal #1 BALL IN GOLF
Elements:
Standard Character Yes. The mark consists of standard characters without claim to any particular font style, size, or color.
Claim:
Mark Drawing 4 - STANDARD CHARACTER MARK
Type:
Acquired In whole
Distinctiveness
Claim:
Attorney/Correspondence Information
Attorney of Record - None
Correspondent
Correspondent Acushnet Company
Name/Address: 333 Bridge Street
FAIRHAVEN, MASSACHUSETTS 02719-0965
UNITED STATES
Phone: 508-979-2000
Correspondent e- [email protected] Correspondent e- Yes
mail: mail Authorized:
Domestic Representative - Not Found
Prosecution History
Proceeding
Date Description
Number
Sep. 28, 2016 ASSIGNMENT OF OWNERSHIP NOT UPDATED AUTOMATICALLY
Jul. 05, 2016 NOTICE OF ACCEPTANCE OF SEC. 8 & 15 - E-MAILED
Jul. 05, 2016 REGISTERED - SEC. 8 (6-YR) ACCEPTED & SEC. 15 ACK. 76985
Jul. 05, 2016 CASE ASSIGNED TO POST REGISTRATION PARALEGAL 76985
Apr. 26, 2016 TEAS SECTION 8 & 15 RECEIVED
Apr. 26, 2016 TEAS CHANGE OF CORRESPONDENCE RECEIVED
Apr. 12, 2016 COURTESY REMINDER - SEC. 8 (6-YR) E-MAILED
Apr. 12, 2011 REGISTERED-PRINCIPAL REGISTER
Jan. 25, 2011 OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED
Jan. 25, 2011 PUBLISHED FOR OPPOSITION
Dec. 18, 2010 LAW OFFICE PUBLICATION REVIEW COMPLETED 74221
Dec. 18, 2010 ASSIGNED TO LIE 74221
Nov. 28, 2010 APPROVED FOR PUB - PRINCIPAL REGISTER
Nov. 20, 2010 ASSIGNED TO EXAMINER 81093
Aug. 12, 2010 NOTICE OF PSEUDO MARK MAILED
Aug. 11, 2010 NEW APPLICATION OFFICE SUPPLIED DATA ENTERED IN TRAM
Aug. 09, 2010 NEW APPLICATION ENTERED IN TRAM
File Location
Current Location: TMO LAW OFFICE 113 Date in Location: Jul. 05, 2016
Generated on: This page was generated by TSDR on 2018-10-04 15:44:44 EDT
Mark: FJ
Mark Information
Mark Literal FJ
Elements:
Standard Character No
Claim:
Mark Drawing 3 - AN ILLUSTRATION DRAWING WHICH INCLUDES WORD(S)/ LETTER(S)/NUMBER(S)
Type:
Design Search 26.01.02 - Plain single line circles; Circles, plain single line
Code(s):
Attorney/Correspondence Information
Attorney of Record
Docket Number: 6205-032-999
Correspondent
Correspondent LISA ROGAN
Name/Address: ACUSHNET COMPANY
333 BRIDGE STREET
FAIRHAVEN, MASSACHUSETTS 02719-4900
UNITED STATES
Phone: 508-979-2000
Correspondent e- [email protected] lisa_rogan@acushnet Correspondent e- Yes
mail: golf.com [email protected] TMdep mail Authorized:
[email protected] andrea_sorell@acushnetgolf
.com
Domestic Representative - Not Found
Prosecution History
Proceeding
Date Description
Number
Sep. 28, 2016 ASSIGNMENT OF OWNERSHIP NOT UPDATED AUTOMATICALLY
Feb. 01, 2013 NOTICE OF ACCEPTANCE OF SEC. 8 & 9 - E-MAILED
Feb. 01, 2013 REGISTERED AND RENEWED (SECOND RENEWAL - 10 YRS) 68502
Feb. 01, 2013 REGISTERED - SEC. 8 (10-YR) ACCEPTED/SEC. 9 GRANTED 68502
Feb. 01, 2013 CASE ASSIGNED TO POST REGISTRATION PARALEGAL 68502
Jan. 16, 2013 TEAS SECTION 8 & 9 RECEIVED
Jan. 16, 2013 TEAS CHANGE OF CORRESPONDENCE RECEIVED
Apr. 07, 2010 REVIEW OF CORRESPONDENCE COMPLETE 77315
Apr. 06, 2010 CASE ASSIGNED TO POST REGISTRATION PARALEGAL 77315
Jun. 02, 2008 CASE FILE IN TICRS
May 05, 2006 TEAS CHANGE OF CORRESPONDENCE RECEIVED
Mar. 04, 2004 PAPER RECEIVED
Jan. 21, 2004 TEAS CHANGE OF CORRESPONDENCE RECEIVED
Mar. 13, 2003 AMENDMENT UNDER SECTION 7 - ISSUED
Mar. 12, 2003 REGISTERED AND RENEWED (FIRST RENEWAL - 10 YRS)
Mar. 12, 2003 REGISTERED - SEC. 8 (10-YR) ACCEPTED/SEC. 9 GRANTED
Dec. 12, 2002 REGISTERED - COMBINED SECTION 8 (10-YR) & SEC. 9 FILED
Dec. 12, 2002 PAPER RECEIVED
May 27, 1999 REGISTERED - SEC. 8 (6-YR) ACCEPTED & SEC. 15 ACK.
Jan. 06, 1999 REGISTERED - SEC. 8 (6-YR) & SEC. 15 FILED
Jan. 26, 1993 REGISTERED-PRINCIPAL REGISTER
Nov. 03, 1992 PUBLISHED FOR OPPOSITION
Oct. 08, 1992 NOTICE OF PUBLICATION
Case 1:18-cv-12093-JCB Document 1-1 Filed 10/05/18 Page 65 of 94
Proceedings
Summary
Number of 3
Proceedings:
Type of Proceeding: Opposition
Proceeding 91124337 Filing Date: Jan 03, 2001
Number:
Status: Terminated Status Date: Oct 26, 2001
Interlocutory GEORGE POLOGEORGIS
Attorney:
Defendant
Name: PAUL CARTER
Correspondent THOMAS J. TIGHE
Address: TIGHE & ASSOCIATES
6265 GREENWICH STE 103
SAN DIEGO , CA 9 , 2122-05916
Associated marks
Serial Registration
Mark Application Status
Number Number
FD Abandoned - After Inter-Partes Decision 75659564
Plaintiff(s)
Name: ACUSHNET COMPANY
Correspondent PETER D. VOGEL
Address: PENNIE & EDMONDS LLP
1155 AVENUE OF THE AMERICAS
NEW YORK NY , 10036
UNITED STATES
Associated marks
Serial Registration
Mark Application Status
Number Number
FJ REGISTERED AND RENEWED 74285776 1748627
Prosecution History
Entry Number History Text Date Due Date
1 FILED AND FEE Jan 03, 2001
2 NOTICE AND TRIAL DATES SENT; ANSWER DUE: Oct 26, 2001 Dec 05, 2001
3 PENDING, INSTITUTED Oct 26, 2001
4 NOTICE OF DEFAULT May 31, 2002
Type of Proceeding: Opposition
Proceeding 91121137 Filing Date: Nov 15, 2000
Number:
Status: Terminated Status Date: Aug 20, 2001
Interlocutory ANDREW P BAXLEY
Attorney:
Defendant
Name: PAUL CARTER
Correspondent THOMAS J. TIGHE
Address: TIGHE & ASSOCIATES
6265 GREENWICH DRIVE SUITE 103
SAN DIEGO CA , 92122-5916
UNITED STATES
Case 1:18-cv-12093-JCB Document 1-1 Filed 10/05/18 Page 68 of 94
Associated marks
Serial Registration
Mark Application Status
Number Number
FD Abandoned - After Inter-Partes Decision 75680821
Plaintiff(s)
Name: ACUSHNET COMPANY
Correspondent COLLEEN M. KEEGAN
Address: PENNIE & EDMONDS LLP
1155 AVENUE OF THE AMERICAS
NEW YORK NY , 10036
UNITED STATES
Associated marks
Serial Registration
Mark Application Status
Number Number
FJ REGISTERED AND RENEWED 74285776 1748627
Prosecution History
Entry Number History Text Date Due Date
1 FILED AND FEE Nov 15, 2000
2 NOTICE AND TRIAL DATES SENT; ANSWER DUE: Nov 30, 2000 Jan 09, 2001
3 PENDING, INSTITUTED Nov 30, 2000
4 NOTICE OF DEFAULT Jun 04, 2001
5 BOARD'S DECISION: SUSTAINED Aug 20, 2001
6 TERMINATED Aug 20, 2001
Type of Proceeding: Opposition
Proceeding 91112658 Filing Date: Dec 23, 1998
Number:
Status: Terminated Status Date: Jun 08, 1999
Interlocutory LINDA M SKORO
Attorney:
Defendant
Name: THE ARNOLD PALMER GOLF COMPANY
Correspondent DOUGLAS T. JOHNSON
Address: MILLER & MARTIN
1000 VOLUNTEER BUILDING 832 GEORGIA AVENUE
CHATTANOOGA TN , 37402-2289
UNITED STATES
Associated marks
Serial Registration
Mark Application Status
Number Number
TJ Abandoned - After Inter-Partes Decision 75407930
Plaintiff(s)
Name: ACUSHNET COMPANY
Correspondent PETER D. VOGL
Address: PENNIE & EDMONDS
1155 AVENUE OF THE AMERICAS
NEW YORK NY , 10036-2711
UNITED STATES
Associated marks
Serial Registration
Mark Application Status
Number Number
FJ REGISTERED AND RENEWED 74285776 1748627
Prosecution History
Entry Number History Text Date Due Date
1 FILED AND FEE Dec 23, 1998
2 NOTICE SENT; TRIAL DATES RESET; ANSWER DUE Jan 22, 1999 Mar 03, 1999
3 PENDING, INSTITUTED Jan 22, 1999
4 D'S MOT FOR EXTEN. OF TIME W/ CONSENT Mar 05, 1999
5 DEF'S EXPRESS ABAND. OF APPLICATION. May 07, 1999
Case 1:18-cv-12093-JCB Document 1-1 Filed 10/05/18 Page 69 of 94
Generated on: This page was generated by TSDR on 2018-10-04 15:45:31 EDT
Mark: FJ
Mark Information
Mark Literal FJ
Elements:
Standard Character No
Claim:
Mark Drawing 1 - TYPESET WORD(S) /LETTER(S) /NUMBER(S)
Type:
For: VESTS, JACKETS, PANTS, BELTS, HATS, GOLF SHOES, AND SOCKS
International 025 - Primary Class U.S Class(es): 022, 039
Class(es):
Class Status: ACTIVE
Basis: 1(a)
First Use: Mar. 1969 Use in Commerce: Mar. 1969
Attorney/Correspondence Information
Attorney of Record
Attorney Name: Nancy H. Lutz Docket Number: 766202-1388
Correspondent
Correspondent Lisa Rogan
Name/Address: ACUSHNET COMPANY
333 Bridge Street
Fairhaven, MASSACHUSETTS 02719
UNITED STATES
Phone: 508-979-2000
Correspondent e- [email protected] sean_wiggins@acush Correspondent e- Yes
mail: netgolf.com [email protected] mail Authorized:
Domestic Representative - Not Found
Prosecution History
Proceeding
Date Description
Number
Dec. 28, 2017 NOTICE OF SUIT
Sep. 28, 2016 ASSIGNMENT OF OWNERSHIP NOT UPDATED AUTOMATICALLY
May 29, 2014 NOTICE OF SUIT
Dec. 02, 2013 NOTICE OF SUIT
Feb. 28, 2013 NOTICE OF ACCEPTANCE OF SEC. 8 & 9 - E-MAILED
Feb. 28, 2013 REGISTERED AND RENEWED (FIRST RENEWAL - 10 YRS) 76533
Feb. 28, 2013 REGISTERED - SEC. 8 (10-YR) ACCEPTED/SEC. 9 GRANTED 76533
Feb. 26, 2013 TEAS SECTION 8 & 9 RECEIVED
Feb. 26, 2013 TEAS CHANGE OF CORRESPONDENCE RECEIVED
Aug. 01, 2008 CASE FILE IN TICRS
May 22, 2008 REGISTERED - SEC. 8 (6-YR) ACCEPTED & SEC. 15 ACK. 76533
Apr. 30, 2008 TEAS SECTION 8 & 15 RECEIVED
May 05, 2006 TEAS CHANGE OF CORRESPONDENCE RECEIVED
Mar. 04, 2004 PAPER RECEIVED
Jan. 21, 2004 TEAS CHANGE OF CORRESPONDENCE RECEIVED
Mar. 18, 2003 REGISTERED-PRINCIPAL REGISTER
Dec. 24, 2002 PUBLISHED FOR OPPOSITION
Dec. 04, 2002 NOTICE OF PUBLICATION
Sep. 25, 2002 APPROVED FOR PUB - PRINCIPAL REGISTER
Sep. 11, 2002 CORRESPONDENCE RECEIVED IN LAW OFFICE
Sep. 11, 2002 PAPER RECEIVED
Jul. 24, 2002 NON-FINAL ACTION MAILED
Case 1:18-cv-12093-JCB Document 1-1 Filed 10/05/18 Page 72 of 94
Generated on: This page was generated by TSDR on 2018-10-04 15:46:11 EDT
Mark: FOOTJOY
Mark Information
Mark Literal FOOTJOY
Elements:
Standard Character Yes. The mark consists of standard characters without claim to any particular font style, size, or color.
Claim:
Mark Drawing 4 - STANDARD CHARACTER MARK
Type:
For: BOOTS AND SHOES MADE OF LEATHER AND COMBINATIONS OF LEATHER AND FABRIC
International 025 U.S Class(es): 039 - Primary Class
Class(es):
Class Status: ACTIVE
Basis: 1(a)
First Use: May 1920 Use in Commerce: May 1920
Attorney/Correspondence Information
Attorney of Record - None
Correspondent
Correspondent TROY LESTER
Name/Address: ACUSHNET COMPANY
333 BRIDGE STREET
FAIRHAVEN, MASSACHUSETTS UNITED STATES 02719-4900
Domestic Representative - Not Found
Prosecution History
Proceeding
Date Description
Number
Sep. 28, 2016 ASSIGNMENT OF OWNERSHIP NOT UPDATED AUTOMATICALLY
Apr. 27, 2010 REGISTERED AND RENEWED (FIFTH RENEWAL - 10 YRS) 73376
Apr. 27, 2010 REGISTERED - SEC. 8 (10-YR) ACCEPTED/SEC. 9 GRANTED
Apr. 20, 2010 SEC 7 REQUEST FILED 73376
Apr. 27, 2010 AMENDMENT UNDER SECTION 7 - ISSUED 73376
Apr. 20, 2010 TEAS SECTION 8 & 9 RECEIVED
Apr. 20, 2010 TEAS SECTION 7 REQUEST RECEIVED
Apr. 20, 2010 TEAS SECTION 7 REQUEST RECEIVED
Jun. 19, 2009 REVIEW OF CORRESPONDENCE COMPLETE 61619
Jan. 09, 2009 CASE FILE IN TICRS
May 05, 2006 TEAS CHANGE OF CORRESPONDENCE RECEIVED
Apr. 01, 2006 REGISTERED AND RENEWED (FOURTH RENEWAL - 10 YRS) 73376
Apr. 01, 2006 REGISTERED - SEC. 8 (10-YR) ACCEPTED/SEC. 9 GRANTED
May 24, 2005 REGISTERED - COMBINED SECTION 8 (10-YR) & SEC. 9 FILED
Nov. 03, 2004 FAX RECEIVED
Mar. 04, 2004 PAPER RECEIVED
Jan. 21, 2004 TEAS CHANGE OF CORRESPONDENCE RECEIVED
May 27, 1990 REGISTERED AND RENEWED (THIRD RENEWAL - 20 YRS)
May 17, 1990 REGISTERED - SEC. 9 FILED/CHECK RECORD FOR SEC. 8 67657
Sep. 27, 1970 REGISTERED AND RENEWED (SECOND RENEWAL - 20 YRS)
May 27, 1970 REGISTERED - SEC. 9 FILED/CHECK RECORD FOR SEC. 8
Jan. 04, 1955 REGISTERED - SEC. 8 (6-YR) ACCEPTED & SEC. 15 ACK.
Nov. 30, 1954 REGISTERED - SEC. 8 (6-YR) & SEC. 15 FILED
Jun. 15, 1950 REGISTERED AND RENEWED (FIRST RENEWAL - 20 YRS) 67657
May 27, 1950 REGISTERED - SEC. 9 FILED/CHECK RECORD FOR SEC. 8 67657
Jan. 04, 1949 PUBLISHED SECTION 12(C) 67657
Dec. 08, 1947 SECTION 12(C) AFFIDAVIT FILED 67657
Name:
Correspondent 295 MADISON AVE.
Address: NEW YORK 17, NY
Domestic Representative - Not Found
Assignment 3 of 8
Conveyance: CERTIFICATE BY THE SECRETARY OF THE COMMONWEALTH OF MASSACHUSETTS, SHOWING CHANGES OF NAME ON
MAR. 24, 1920, DEC. 22, 1958 AND APRIL 5, 1973.
Reel/Frame: 0269/0168 Pages: 1
Date Recorded: Jun. 30, 1975
Supporting No Supporting Documents Available
Documents:
Assignor
Name: LIBERTY SHOE COMPANY INC.-CHANGED TO- Execution Date: Mar. 12, 1975
Legal Entity Type: UNKNOWN State or Country No Place Where Organized Found
Where Organized:
Name: STONE-TARLOW CO., INC. -CHANGED TO= Execution Date: Not Found
Legal Entity Type: UNKNOWN State or Country No Place Where Organized Found
Where Organized:
Assignee
Name: WELLS FARGO BANK, NATIONAL ASSOCIATION, AS ADMINISTRATIVE AGENT
Legal Entity Type: NATIONAL ASSOCIATION State or Country UNITED STATES
Where Organized:
Address: 1808 ASTON AVENUE
SUITE 250
CARLSBAD, CALIFORNIA 92008
Correspondent
Correspondent LATHAM & WATKINS LLP C/O ANGELA M. AMARU
Name:
Correspondent 885 THIRD AVENUE
Address: SUITE 1000
NEW YORK, NY 10022
Domestic Representative - Not Found
Assignment 8 of 8
Conveyance: RELEASE OF SECURITY INTEREST IN TRADEMARKS PREVIOUSLY RECORDED AT REEL/FRAME (4673/0710)
Reel/Frame: 5879/0448 Pages: 10
Date Recorded: Sep. 14, 2016
Supporting assignment-tm-5879-0448.pdf
Documents:
Assignor
Name: KOREA DEVELOPMENT BANK, NEW YORK Execution Date: Jul. 28, 2016
BRANCH, AS ADMINISTRATIVE AGENT
Legal Entity Type: NEW YORK STATE BANKING DEPARTMENT- State or Country KOREA, REPUBLIC OF
LICENSED BRANCH OF A STATE-OWNED Where Organized:
POLICY BANK
Assignee
Name: ACUSHNET COMPANY
Legal Entity Type: CORPORATION State or Country DELAWARE
Where Organized:
Address: 333 BRIDGE STREET
FAIRHAVEN, MASSACHUSETTS 02719
Correspondent
Correspondent AMBER HAREZLAK
Name:
Correspondent 2475 HANOVER STREET
Address: PALO ALTO, CA 94304
Domestic Representative - Not Found
Proceedings
Summary
Number of 3
Proceedings:
Type of Proceeding: Cancellation
Proceeding 92048924 Filing Date: Feb 22, 2008
Number:
Status: Terminated Status Date: Jun 24, 2008
Interlocutory CHERYL A BUTLER
Attorney:
Defendant
Name: Sunhwan Choi
Correspondent ROBERT J. KENNEY
Address: BIRCH, STEWART, KOLASCH & BIRCH, LLP
P.O. BOX 747
FALLS CHURCH VA UNITED STATES , 22040-0747
Correspondent e- [email protected]
mail:
Associated marks
Case 1:18-cv-12093-JCB Document 1-1 Filed 10/05/18 Page 80 of 94
Serial Registration
Mark Application Status
Number Number
G GREENJOY CLASSIC Cancelled - Section 18 78096924 2931536
Plaintiff(s)
Name: Acushnet Company
Correspondent Nancy H. Lutz
Address: Kelley Drye & Warren LLP
3050 K Street N.W.
Washington DC UNITED STATES , 20006
Correspondent e- [email protected] , [email protected]
mail:
Associated marks
Serial Registration
Mark Application Status
Number Number
FOOTJOY EUROPA COLLECTION Cancelled - Section 8 75754497 2381163
MYJOYS REGISTERED AND RENEWED 76529219 2909806
SOFJOY REGISTERED AND RENEWED 74396116 1906660
SOFTJOYS REGISTERED AND RENEWED 73093223 1061752
SOFTJOYS TERRAINS Cancelled - Section 8 75739976 2418835
GREEN-JOYS REGISTERED AND RENEWED 75212880 2118010
DRYJOYS REGISTERED AND RENEWED 73839522 1602461
DRYJOYS REGISTERED AND RENEWED 76309221 2624539
DRYJOYS Cancelled - Section 8 76975520 2744734
FOOTJOY REGISTERED AND RENEWED 73304591 1198007
FOOT-JOY REGISTERED AND RENEWED 71288745 271260
FOOTJOY REGISTERED AND RENEWED 75290602 2163931
Prosecution History
Entry Number History Text Date Due Date
1 FILED AND FEE Feb 22, 2008
2 NOTICE AND TRIAL DATES SENT; ANSWER DUE: Feb 23, 2008 Apr 03, 2008
3 PENDING, INSTITUTED Feb 23, 2008
4 NOTICE OF DEFAULT Apr 22, 2008
5 BOARD'S DECISION: GRANTED Jun 10, 2008
6 COMMR'S ORDER CANCELLING REGISTRATION Jun 24, 2008
7 TERMINATED Jun 24, 2008
Type of Proceeding: Opposition
Proceeding 91103979 Filing Date: Nov 06, 1996
Number:
Status: Terminated Status Date: Jan 15, 1998
Interlocutory
Attorney:
Defendant
Name: JO-Y-JO LIMITED
Correspondent LAWRENCE E. ABELMAN
Address: ABELMAN, FRAYNE & SCHWAB
150 EAST 42ND STREET
NEW YORK NY UNITED STATES , 10017-4141
Associated marks
Serial Registration
Mark Application Status
Number Number
JO-Y-JO Cancelled - Section 8 74702607 2278595
Plaintiff(s)
Name: ACUSHNET COMPANY
Correspondent PETER D. VOGL
Address: PENNIE & EDMONDS
1155 AVENUE OF THE AMERICAS
NEW YORK NY UNITED STATES , 10036-2711
Case 1:18-cv-12093-JCB Document 1-1 Filed 10/05/18 Page 81 of 94
Associated marks
Serial Registration
Mark Application Status
Number Number
FOOT-JOY REGISTERED AND RENEWED 71288745 271260
Prosecution History
Entry Number History Text Date Due Date
1 FILED AND FEE Nov 06, 1996
2 NOTICE SENT; ANSWER DUE (DUE DATE) Nov 26, 1996 Jan 05, 1997
3 PENDING, INSTITUTED Nov 26, 1996
4 D'S MOT FOR EXTEN. OF TIME W/ CONSENT Jan 03, 1997
5 D'S MOT FOR EXTEN. OF TIME W/ CONSENT Jan 22, 1997
6 D'S MOT FOR EXTEN. OF TIME W/ CONSENT Mar 04, 1997
7 D'S MOT FOR EXTEN. OF TIME W/ CONSENT Apr 28, 1997
8 D'S MOT FOR EXTEN. OF TIME W/ CONSENT Jun 02, 1997
9 D'S MOT FOR EXTEN. OF TIME W/ CONSENT Jul 07, 1997
10 D'S MOT FOR EXTEN. OF TIME W/ CONSENT Sep 02, 1997
11 D'S MOT FOR EXTEN. OF TIME W/ CONSENT Oct 30, 1997
12 DEF'S REQUEST TO AMEND GOODS W/CON Nov 19, 1997
13 WTHDRWL OF OPP Dec 29, 1997
14 BD'S DECISION: DISMISSED W/O PREJUDICE Jan 15, 1998
15 TERMINATED Jan 15, 1998
Type of Proceeding: Opposition
Proceeding 91080091 Filing Date: Mar 10, 1989
Number:
Status: Terminated Status Date: May 16, 1990
Interlocutory GEORGE D HOHEIN
Attorney:
Defendant
Name: 88 IMPORTS, INC.
Correspondent KU & FONG
Address: 609 SOUTH GRAND AVE. SUITE 1000
LOS ANGELES CA UNITED STATES , 90017
Associated marks
Serial Registration
Mark Application Status
Number Number
BOTTOM JOY Abandoned - After Inter-Partes Decision 73752435
Plaintiff(s)
Name: FOOT-JOY, INC.
Correspondent PENNIE & EDMONDS
Address: ATT: MERCER L. STOCKELL
1155 AVENUE OF THE AMERICAS
NEW YORK NY UNITED STATES , 10036
Associated marks
Serial Registration
Mark Application Status
Number Number
FOOT-JOY REGISTERED AND RENEWED 71288745 271260
Prosecution History
Entry Number History Text Date Due Date
1 OPP IN DULP & FEE Mar 10, 1989
2 NOTICE SENT; ANSWER DUE (DUE DATE) Mar 30, 1989 May 09, 1989
3 PENDING, INSTITUTED Mar 30, 1989
4 ANSWER May 15, 1989
5 RESPONSE RE LATE ANSWER DUE 7-3-89 Jun 13, 1989
6 RESPONSE RE LATE ANSWER Jun 30, 1989
7 TRIAL DATES SET Jul 13, 1989
8 WITHDRAWAL OF APPLICATION Jan 30, 1990
9 WITHDRAWAL OF OPPOSITION Jan 30, 1990
Case 1:18-cv-12093-JCB Document 1-1 Filed 10/05/18 Page 82 of 94
Generated on: This page was generated by TSDR on 2018-10-04 15:47:19 EDT
Mark: FOOTJOY
Mark Information
Mark Literal FOOTJOY
Elements:
Standard Character No
Claim:
Mark Drawing 1 - TYPESET WORD(S) /LETTER(S) /NUMBER(S)
Type:
For: DRESS SHOES, CASUAL SHOES, GOLF SHOES, ATHLETIC SHOES, BELTS, SOCKS AND GOLF GLOVES
International 025 - Primary Class U.S Class(es): 022, 039
Class(es):
Class Status: ACTIVE
Basis: 1(a)
First Use: May 1920 Use in Commerce: May 1920
Attorney/Correspondence Information
Attorney of Record
Attorney Name: PETER D. VOGL
Correspondent
Correspondent Lisa Rogan
Name/Address: Acushnet Company
333 BRIDGE STREET
FAIRHAVEN, MASSACHUSETTS 02719
UNITED STATES
Phone: 508-979-2000
Correspondent e- [email protected] lisa_rogan@acushnet Correspondent e- Yes
mail: golf.com [email protected] TMdep mail Authorized:
[email protected] andrea_sorell@acushnetgolf
.com
Domestic Representative - Not Found
Prosecution History
Proceeding
Date Description
Number
Sep. 28, 2016 ASSIGNMENT OF OWNERSHIP NOT UPDATED AUTOMATICALLY
Jun. 16, 2012 NOTICE OF ACCEPTANCE OF SEC. 8 & 9 - E-MAILED
Jun. 16, 2012 REGISTERED AND RENEWED (SECOND RENEWAL - 10 YRS) 69471
Jun. 16, 2012 REGISTERED - SEC. 8 (10-YR) ACCEPTED/SEC. 9 GRANTED 69471
Jun. 16, 2012 CASE ASSIGNED TO POST REGISTRATION PARALEGAL 69471
Jun. 08, 2012 TEAS CHANGE OF CORRESPONDENCE RECEIVED
Jun. 08, 2012 TEAS SECTION 8 & 9 RECEIVED
Mar. 03, 2010 REVIEW OF CORRESPONDENCE COMPLETE 67657
Mar. 02, 2010 CASE ASSIGNED TO POST REGISTRATION PARALEGAL 67657
Mar. 27, 2008 CASE FILE IN TICRS
May 05, 2006 TEAS CHANGE OF CORRESPONDENCE RECEIVED
Mar. 04, 2004 PAPER RECEIVED
Jan. 23, 2004 TEAS CHANGE OF CORRESPONDENCE RECEIVED
Jan. 23, 2004 TEAS CHANGE OF CORRESPONDENCE RECEIVED
Oct. 10, 2002 REGISTERED AND RENEWED (FIRST RENEWAL - 10 YRS)
Oct. 10, 2002 REGISTERED - SEC. 8 (10-YR) ACCEPTED/SEC. 9 GRANTED
Aug. 21, 2002 AMENDMENT UNDER SECTION 7 - ISSUED
May 31, 2002 REGISTERED - COMBINED SECTION 8 (10-YR) & SEC. 9 FILED
Nov. 04, 1988 REGISTERED - SEC. 8 (6-YR) ACCEPTED & SEC. 15 ACK.
Oct. 24, 1988 RESPONSE RECEIVED TO POST REG. ACTION
Oct. 11, 1988 POST REGISTRATION ACTION MAILED - SEC. 8 & 15
Jun. 09, 1988 REGISTERED - SEC. 8 (6-YR) & SEC. 15 FILED
Jun. 15, 1982 REGISTERED-PRINCIPAL REGISTER
Mar. 23, 1982 PUBLISHED FOR OPPOSITION
Continued Use:
Affidavit of Section 15 - Accepted
Incontestability:
Renewal Date: Jun. 15, 2012
Change in Yes
Registration:
Amendment to a The drawing is amended to appear as follows: FOOTJOY
Registration/Renewal
Certificate:
POLICY BANK
Address: 320 PARK AVENUE, 32ND FLOOR
NEW YORK, NEW YORK 10022
Correspondent
Correspondent ORRICK, HERRINGTON & SUTCLIFFE LLP
Name:
Correspondent 2050 MAIN STREET, SUITE 1100
Address: IP PROSECUTION DEPARTMENT
IRVINE, CA 92614-8255
Domestic Representative - Not Found
Assignment 3 of 4
Conveyance: SECURITY INTEREST
Reel/Frame: 5841/0382 Pages: 11
Date Recorded: Jul. 28, 2016
Supporting assignment-tm-5841-0382.pdf
Documents:
Assignor
Name: ACUSHNET COMPANY Execution Date: Jul. 28, 2016
Legal Entity Type: CORPORATION State or Country DELAWARE
Where Organized:
Assignee
Name: WELLS FARGO BANK, NATIONAL ASSOCIATION, AS ADMINISTRATIVE AGENT
Legal Entity Type: NATIONAL ASSOCIATION State or Country UNITED STATES
Where Organized:
Address: 1808 ASTON AVENUE
SUITE 250
CARLSBAD, CALIFORNIA 92008
Correspondent
Correspondent LATHAM & WATKINS LLP C/O ANGELA M. AMARU
Name:
Correspondent 885 THIRD AVENUE
Address: SUITE 1000
NEW YORK, NY 10022
Domestic Representative - Not Found
Assignment 4 of 4
Conveyance: RELEASE OF SECURITY INTEREST IN TRADEMARKS PREVIOUSLY RECORDED AT REEL/FRAME (4673/0710)
Reel/Frame: 5879/0448 Pages: 10
Date Recorded: Sep. 14, 2016
Supporting assignment-tm-5879-0448.pdf
Documents:
Assignor
Name: KOREA DEVELOPMENT BANK, NEW YORK Execution Date: Jul. 28, 2016
BRANCH, AS ADMINISTRATIVE AGENT
Legal Entity Type: NEW YORK STATE BANKING DEPARTMENT- State or Country KOREA, REPUBLIC OF
LICENSED BRANCH OF A STATE-OWNED Where Organized:
POLICY BANK
Assignee
Name: ACUSHNET COMPANY
Legal Entity Type: CORPORATION State or Country DELAWARE
Where Organized:
Address: 333 BRIDGE STREET
FAIRHAVEN, MASSACHUSETTS 02719
Correspondent
Correspondent AMBER HAREZLAK
Name:
Correspondent 2475 HANOVER STREET
Address: PALO ALTO, CA 94304
Domestic Representative - Not Found
Case 1:18-cv-12093-JCB Document 1-1 Filed 10/05/18 Page 87 of 94
Proceedings
Summary
Number of 3
Proceedings:
Type of Proceeding: Cancellation
Proceeding 92048924 Filing Date: Feb 22, 2008
Number:
Status: Terminated Status Date: Jun 24, 2008
Interlocutory CHERYL A BUTLER
Attorney:
Defendant
Name: Sunhwan Choi
Correspondent ROBERT J. KENNEY
Address: BIRCH, STEWART, KOLASCH & BIRCH, LLP
P.O. BOX 747
FALLS CHURCH VA , 22040-0747
UNITED STATES
Correspondent e- [email protected]
mail:
Associated marks
Serial Registration
Mark Application Status
Number Number
G GREENJOY CLASSIC Cancelled - Section 18 78096924 2931536
Plaintiff(s)
Name: Acushnet Company
Correspondent Nancy H. Lutz
Address: Kelley Drye & Warren LLP
3050 K Street N.W.
Washington DC , 20006
UNITED STATES
Correspondent e- [email protected] , [email protected]
mail:
Associated marks
Serial Registration
Mark Application Status
Number Number
FOOTJOY EUROPA COLLECTION Cancelled - Section 8 75754497 2381163
MYJOYS REGISTERED AND RENEWED 76529219 2909806
SOFJOY REGISTERED AND RENEWED 74396116 1906660
SOFTJOYS REGISTERED AND RENEWED 73093223 1061752
SOFTJOYS TERRAINS Cancelled - Section 8 75739976 2418835
GREEN-JOYS REGISTERED AND RENEWED 75212880 2118010
DRYJOYS REGISTERED AND RENEWED 73839522 1602461
DRYJOYS REGISTERED AND RENEWED 76309221 2624539
DRYJOYS Cancelled - Section 8 76975520 2744734
FOOTJOY REGISTERED AND RENEWED 73304591 1198007
FOOT-JOY REGISTERED AND RENEWED 71288745 271260
FOOTJOY REGISTERED AND RENEWED 75290602 2163931
Prosecution History
Entry Number History Text Date Due Date
1 FILED AND FEE Feb 22, 2008
2 NOTICE AND TRIAL DATES SENT; ANSWER DUE: Feb 23, 2008 Apr 03, 2008
3 PENDING, INSTITUTED Feb 23, 2008
4 NOTICE OF DEFAULT Apr 22, 2008
5 BOARD'S DECISION: GRANTED Jun 10, 2008
6 COMMR'S ORDER CANCELLING REGISTRATION Jun 24, 2008
7 TERMINATED Jun 24, 2008
Case 1:18-cv-12093-JCB Document 1-1 Filed 10/05/18 Page 88 of 94
Serial Registration
Mark Application Status
Number Number
FOOT-JOY REGISTERED AND RENEWED 73304591 1198007
Prosecution History
Entry Number History Text Date Due Date
1 FILED AND FEE Aug 27, 1985
2 NOTICE SENT; ANSWER DUE (DUE DATE) Oct 21, 1985 Dec 02, 1985
3 PENDING, INSTITUTED Oct 21, 1985
4 ANSWER Nov 29, 1985
5 TRIAL DATES SET Dec 16, 1985
6 P'S MOT FOR EXTEN. OF TIME W/ CONSENT Mar 31, 1986
7 TRIAL DATES RESET Apr 23, 1986
8 P'S MOT FOR EXTEN. OF TIME W/ CONSENT Jun 09, 1986
9 TRIAL DATES RESET Jun 18, 1986
10 P'S MOT TO SUSP PEND SETLMT NEGOT W CNST Jul 11, 1986
11 SUSPENDED Sep 02, 1986
12 DEFENDANT'S REQUEST TO RESUME Feb 25, 1987
13 PLAINTIFF'S MOTION TO SUSPEND PENDING CIVIL ACTION Mar 06, 1987
14 SUSPENDED PENDING DISP OF CIVIL ACTION Oct 26, 1987
15 CA DECISION Dec 17, 1987
16 BOARD'S DECISION: SUSTAINED Jan 12, 1988
17 TERMINATED May 23, 1988
Case 1:18-cv-12093-JCB Document 1-1 Filed 10/05/18 Page 90 of 94
Generated on: This page was generated by TSDR on 2018-10-04 15:48:07 EDT
Mark: FOOTJOY
Mark Information
Mark Literal FOOTJOY
Elements:
Standard Character No
Claim:
Mark Drawing 1 - TYPESET WORD(S) /LETTER(S) /NUMBER(S)
Type:
For: articles of clothing, namely, jackets, pullovers, pants, rainwear, socks, gloves, hats and visors
International 025 - Primary Class U.S Class(es): 022, 039
Class(es):
Class Status: ACTIVE
Basis: 1(a)
First Use: Aug. 14, 1996 Use in Commerce: Aug. 14, 1996
Attorney/Correspondence Information
Attorney of Record - None
Correspondent
Correspondent ACUSHNET COMPANY
Name/Address: 333 BRIDGE STREET
FAIRHAVEN, MASSACHUSETTS 02719
UNITED STATES
Correspondent e- [email protected] andrea_sorell@acush Correspondent e- Yes
mail: netgolf.com mail Authorized:
Domestic Representative - Not Found
Prosecution History
Proceeding
Date Description
Number
May 29, 2018 NOTICE OF ACCEPTANCE OF SEC. 8 & 9 - E-MAILED
May 29, 2018 REGISTERED AND RENEWED (SECOND RENEWAL - 10 YRS) 66607
May 29, 2018 REGISTERED - SEC. 8 (10-YR) ACCEPTED/SEC. 9 GRANTED 66607
May 29, 2018 CASE ASSIGNED TO POST REGISTRATION PARALEGAL 66607
May 18, 2018 TEAS CHANGE OF CORRESPONDENCE RECEIVED
May 18, 2018 TEAS SECTION 8 & 9 RECEIVED
Sep. 28, 2016 ASSIGNMENT OF OWNERSHIP NOT UPDATED AUTOMATICALLY
May 29, 2014 NOTICE OF SUIT
Dec. 02, 2013 NOTICE OF SUIT
Dec. 12, 2007 REGISTERED AND RENEWED (FIRST RENEWAL - 10 YRS) 61619
Dec. 12, 2007 REGISTERED - SEC. 8 (10-YR) ACCEPTED/SEC. 9 GRANTED
Dec. 10, 2007 ASSIGNED TO PARALEGAL 61619
Dec. 07, 2007 TEAS SECTION 8 & 9 RECEIVED
Aug. 13, 2007 CASE FILE IN TICRS
May 05, 2006 TEAS CHANGE OF CORRESPONDENCE RECEIVED
Mar. 04, 2004 PAPER RECEIVED
Jan. 28, 2004 REGISTERED - SEC. 8 (6-YR) ACCEPTED & SEC. 15 ACK.
Jan. 21, 2004 TEAS CHANGE OF CORRESPONDENCE RECEIVED
Nov. 12, 2003 AMENDMENT UNDER SECTION 7 - ISSUED
Sep. 24, 2003 REGISTERED - SEC. 8 (6-YR) & SEC. 15 FILED
Sep. 24, 2003 SEC 7 REQUEST FILED
Jun. 09, 1998 REGISTERED-PRINCIPAL REGISTER
Mar. 17, 1998 PUBLISHED FOR OPPOSITION
Feb. 13, 1998 NOTICE OF PUBLICATION
Jan. 12, 1998 APPROVED FOR PUB - PRINCIPAL REGISTER
Jan. 09, 1998 ASSIGNED TO EXAMINER 72148
Proceedings
Summary
Number of 1
Proceedings:
Type of Proceeding: Cancellation
Proceeding 92048924 Filing Date: Feb 22, 2008
Number:
Status: Terminated Status Date: Jun 24, 2008
Interlocutory CHERYL A BUTLER
Attorney:
Defendant
Name: Sunhwan Choi
Correspondent ROBERT J. KENNEY
Address: BIRCH, STEWART, KOLASCH & BIRCH, LLP
P.O. BOX 747
FALLS CHURCH VA , 22040-0747
UNITED STATES
Correspondent e- [email protected]
mail:
Associated marks
Serial Registration
Mark Application Status
Number Number
G GREENJOY CLASSIC Cancelled - Section 18 78096924 2931536
Plaintiff(s)
Name: Acushnet Company
Correspondent Nancy H. Lutz
Address: Kelley Drye & Warren LLP
Case 1:18-cv-12093-JCB Document 1-1 Filed 10/05/18 Page 94 of 94
EXHIBIT B
EXHIBIT C
EXHIBIT D
(b) County of Residence of First Listed Plaintiff Bristol County, MA County of Residence of First Listed Defendant Adelaide, South Australia
(EXCEPT IN U.S. PLAINTIFF CASES) (IN U.S. PLAINTIFF CASES ONLY)
NOTE: IN LAND CONDEMNATION CASES, USE THE LOCATION OF
THE TRACT OF LAND INVOLVED.
(c) Attorneys (Firm Name, Address, and Telephone Number) Attorneys (If Known)
II. BASIS OF JURISDICTION (Place an “X” in One Box Only) III. CITIZENSHIP OF PRINCIPAL PARTIES (Place an “X” in One Box for Plaintiff
(For Diversity Cases Only) and One Box for Defendant)
u 1 U.S. Government u 3 Federal Question PTF DEF PTF DEF
Plaintiff (U.S. Government Not a Party) Citizen of This State u 1 u 1 Incorporated or Principal Place u 4 u 4
of Business In This State
u 2 U.S. Government u 4 Diversity Citizen of Another State u 2 u 2 Incorporated and Principal Place u 5 u 5
Defendant (Indicate Citizenship of Parties in Item III) of Business In Another State
1. Title of case (name of first party on each side only) Acushnet Company v. Golf Gods Pty Ltd
2. Category in which the case belongs based upon the numbered nature of suit code listed on the civil cover sheet. (See local
rule 40.1(a)(1)).
I. 410, 441, 470, 535, 830*, 891, 893, 895, R.23, REGARDLESS OF NATURE OF SUIT.
✔ II. 110, 130, 140, 160, 190, 196, 230, 240, 290,320,362, 370, 371, 380, 430, 440, 442, 443, 445, 446, 448, 710, 720,
740, 790, 820*, 840*, 850, 870, 871.
III. 120, 150, 151, 152, 153, 195, 210, 220, 245, 310, 315, 330, 340, 345, 350, 355, 360, 365, 367, 368, 375, 385,
400,422, 423, 450, 460, 462, 463, 465, 490, 510, 530, 540, 550, 555, 625, 690, 751, 791, 861-865, 890,896,
950.
3. Title and number, if any, of related cases. (See local rule 40.1(g)). If more than one prior related case has been filed in this
district please indicate the title and number of the first filed case in this court.
n/a
4. Has a prior action between the same parties and based on the same claim ever been filed in this court?
YES NO ✔
5. Does the complaint in this case question the constitutionality of an act of congress affecting the public interest? (See 28 USC
§2403)
YES NO ✔
If so, is the U.S.A. or an officer, agent or employee of the U.S. a party?
YES NO
6. Is this case required to be heard and determined by a district court of three judges pursuant to title 28 USC §2284?
YES NO ✔
7. Do all of the parties in this action, excluding governmental agencies of the United States and the Commonwealth of
Massachusetts (“governmental agencies”), residing in Massachusetts reside in the same division? - (See Local Rule 40.1(d)).
YES ✔
NO
A. If yes, in which division do all of the non-governmental parties reside?
YES NO
(PLEASE TYPE OR PRINT)
ATTORNEY'S NAME Jonathan M. Gelchinsky
ADDRESS Pierce Atwood LLP, 254 Commercial Street, Portland, ME 04101
TELEPHONE NO. 207-791-1100
(CategoryForm-201.wpd )
Case 1:18-cv-12093-JCB Document 1-7 Filed 10/05/18 Page 1 of 2
2 AO 120 (Rev. 3/04)
Mail Stop 8 REPORT ON THE
TO:
Director of the U.S. Patent and Trademark Office FILING OR DETERMINATION OF AN
P.O. Box 1450 ACTION REGARDING A PATENT OR
Alexandria, VA 22313-1450 TRADEMARK
In Compliance with 35 U.S.C. § 290 and/or 15 U.S.C. § 1116 you are hereby advised that a court action has been
filed in the U.S. District Court District of Massachusetts on the following Patents or ✔ Trademarks:
DOCKET NO. DATE FILED U.S. DISTRICT COURT
10/5/2018 District of Massachusetts
PLAINTIFF DEFENDANT
In the above—entitled case, the following patent(s)/ trademark(s) have been included:
DATE INCLUDED INCLUDED BY
Amendment Answer Cross Bill ✔ Other Pleading
PATENT OR DATE OF PATENT
HOLDER OF PATENT OR TRADEMARK
TRADEMARK NO. OR TRADEMARK
1 Please see attached
In the above—entitled case, the following decision has been rendered or judgement issued:
DECISION/JUDGEMENT
Copy 1—Upon initiation of action, mail this copy to Director Copy 3—Upon termination of action, mail this copy to Director
Copy 2—Upon filing document adding patent(s), mail this copy to Director Copy 4—Case file copy
Case 1:18-cv-12093-JCB Document 1-7 Filed 10/05/18 Page 2 of 2