We are pleased to report that the Livestrong Foundation has withdrawn its trademark opposition against our client Kidstrong Enterprises.
As we previously reported in this space, the Foundation filed an opposition against Kidstrong, alleging that Kidstrong’s application to register the trademark PROSTRONG, which covers dietary beverages, violated its rights in the mark LIVESTRONG. Kidstrong responded by filing an answer alleging, among other things, that the Foundation’s claims were unwarranted and that the Foundation was guilty of trademark bullying.
Kidstrong served several discovery requests on the Foundation, including several requests relating to its trademark bullying defense. The Foundation requested additional time to respond to the discovery requests and Kidstrong agreed. The parties engaged in settlement discussions, but Kidstrong refused to enter into any agreement limiting its rights in any way. Kidstrong also declined to consent to the withdrawal of the opposition, which would have given the Foundation the right to refile the opposition. The Foundation ultimately withdrew the opposition without Kidstrong’s consent and the opposition was dismissed “with prejudice.” As a result, the Foundation is precluded from challenging the registrabililty of the PROSTRONG mark in the future. According to Kidstrong’s counsel, Jan Bader, “Kidstrong is very pleased with the outcome of the opposition. Now that the proceeding has been withdrawn, Kidstrong can go about its business without further interference from Livestrong.”
While the Livestrong v. Kidstrong opposition is a single case in a sea of trademark bullying cases, the result of the opposition is important. The withdrawal of the opposition is a victory not only for Kidstrong, but for trademark bullying victims everywhere. The case shows that, in this case at least, standing up to trademark bullies works.