Request for Reconsideration afier Final Action
`
`Page 1 of 5
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`PTO Farm 1333 (WW 9/2001)
`OMB No 0551-0350 «Era IISDIZDCQ)
`
`SERIAL NUMBER
`LAW OFFICE ASSIGNED
`
`MARK SECTION (no change)
`ARGUMEN'l'(S)
`
`Request for Reconsideration after Final Action
`
`
`The table below presents the data as entered.
`
`Input Field
`
`This is in response to the Office action mailed on October 16, 2008.
`
`The Ofiice anion continued the refusal of registration on the Principal Register on the ground that the term CHILDREN ‘S must be disclaimed. Applicant previously made a
`As amark that has been used extensively formany yezrs and acquired fame in the marketplace, applicant's THE CHILDREN’S PLACE mark is the very type ofmark to whi
`The Ditectormay accept as prinra facic evidence that theinark has become distinctive, as used on or in connection with the applicant‘s goods in commerce, pr:
`Applicant asserted in its previous responses to Ofiice action that its mark has become distinctive for the goods and services through applicant’: substantially exclusive and co
`Substantially Exclusive And Continuous Use
`In further support ofits claim of acquired diainctiveness, applicant now attaches the decimation ofEllen Cho, Senior Counsel to applicant, The Children's Place Services Cor
`
`As shown in the current application, applicant has ban using the current stylization ofTI-IE CI-IILDREN’S PLACE in astacked blue logo, in connection with all of
`
`Such extensive and long—term use ofTHE CHILDREN’S PLACE mtrk for all ofthe categories ofgoods and services in the application means that the mark has acq
`
`As shown in an excerpt from app1icant’s 2008 10K report filed with the SEC, attached as Exhlblt B to Ms. Cho’s declaration (which is also accessible on q3plicant’s website
`Federal Court Finding that THE CHILDREN'S PLACE mark is Distinctive and Famous
`‘
`'Ihe Federal Court of the Southern Dinrict ofNew York has held that applicant “demonstrated that its [THE Cl-II.LDR.EN’S PLACE] mark is both distinctive and fain-
`.
`.
`. uncontroverted evidence showing that [Applicmt] has recorded sales of approximaely $2 billion and his spent over $33 million to advertise and promote
`
`H. K "16.
`
`Applicant previously argued that the Examinershould defer to the court‘swell-founded conclusion ofthe mark’s fame and high level of acquired distinctiveness, whit
`The Examiner's argument is not well-founded. First, the court clearly relied on more than merely the registrations to reach its conclusion that THE CI-l]LDRl=_'N’S PL
`Second, the FJtan1iner‘s interpretation ofthe court's holding is illogical, in that it must assrme that the court held that the “place“ element ofapplicant‘s mark is distinctive an
`Descriptive Elements Need Not B e Disclaimedflgrj 2(Q
`Both the initial and current Ofiice actions argue thatbecause the “children ’s" element of applicant’s mark is descriptive, it must be disclaimed. However, the Ofiice action fai
`There is no requirement that an applicant seeking registration under § 2(t') prove that any particulardescriptive element ofthe mark, when used separately, has acquired distin
`Applicant’s claim ofacquired distinctiveness as to “children ’s" simply means that when "drildren’s" is used within the mark as awhole, the mark as a whole has acquired dis
`Moreover, under§ 6(a) ofthe Lanharn Act, 15 U.S.C. l056(a), while gzrienc elements may be required to be disclaimed in an application with a§ 2(t) claim, this is not true!
`disclaimers ofgeneric elanents, not ofdescriptive elements.[Z]
`CI-lILDR.EN‘S Is Not Generic for Clothing or Stores
`The current Office action also argues in the alternative, and forthefim DMZ, that CI-l1LDREN’S must be disclaimed in the current application, because the term is gen
`applicant's mark would refer to astore where one goes to buy .
`.
`. children! Obviously, this is not the case aid is anonsensical conclusion.
`
`fi1e://\\ticrs- ais-01\ticrsexport\HtmlToTiffInput\RFR00O12009_04_17__13_43_2 8_TTABO . ..
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`4/ 1 7/2009
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`

`
`Request for Reconsideration afier Final Action
`
`Page 2 of 5
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`As discussed in detail above, the trademark THE CHILDREN ’S PLACE has now acquired die
`
`[1] Applicant could have claimed acquired distinctiveness under § 20') for the whole mark, we In re Del E. Webb Cor;v., but this was not necessmy, because the Faramincr did
`
`[2] A parenthetical forbx re Creafivg Goleths ofWaxiulrxgtarr, Inc. cited in TMEP 1202.02(e) refers to adisclaimcr for “common descriptive" terms. However “common d
`
`EVIDENCE SECTION
`EVIDENCE FILE NAL£E(S)
`ORIG INAI.
`PDF FILE
`CONVERTED
`PDF I-‘l'LI-2(8)
`(3 P329!)
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`ORIGINAL
`PDF FILE
`CONVERIED
`PDF I-'II.E(S)
`G F Ines)
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`ORIGINAL
`PD!‘ F1113
`CONVERTED
`PDF FlI.E(S)
`(5 P-an)
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`DESCRIPTION OF EVIDENCE F111-I
`SIGNATURE SECTION
`ORIGINAL
`PDF FILE
`CONVERTED
`PDF FII.E(S)
`G [1 flees)
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`SIGN.»\T()RY'S NANIE
`SIGNAI'ORY'S POSITION
`RESPONSE SIGNATURE
`SIGNATORY'S NAIVIE
`
`SIGNATORTS POSITION
`DATE SIGNED
`AUTHORIZED SIGNAI ORY
`CONCURRENT APPEAL NOTICE FILED
`
`FILING INFORMATION SECTION
`SUBMIT DA IE
`
`TEAS SIALQ
`
`PTO FarrnI333 (Her: 912007)
`OMB ND U551-CCSU (Exn UJIJIZDCIB)
`
`file://\\ticrs-ais-O1\ticrsexport\HtmlToTifiInput\RFR00012009_O4_17_13_43_2 8_TTABO...
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`4/1712009
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`

`
`Request for Reconsideration after Final Action
`
`Page 3 of 5
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`Request for Reconsideration after Final Action
`
`To the Commissioner for Trademarks:
`
`Application serial no. 77216094 has been amended asfollows:
`ARGU'M]2N1'(S)
`In response to the substantive rel'nsal(s), please note th a following:
`
`This is in response to the Office action mailed on October 16, 2008.
`
`REMARKS
`
`The Office action continued the refusal ofregistration on the Principal Register on the ground that the term CHILDREN'S must he disclaimed Applicant previously made a
`claim of acquired distinctiveness under§ 2(1) as to the “children’s.” element ofthe mark, which was refused by the Examiner. The Office action does not argue that the
`evidence provided by applicait is insufficient to support a claim of acquired distinctiveness. Rather, the Oflice action makes several legal arguments concerning disclaim eis
`under § Z(t), all ofwhich are i.ncor-rect, as discussed in detail below.
`As a mark that has been used extensively formany years and acquired fame in the marketplace, applicant's THE Cl-IlI.DREN’S PLACE mink is the very type ofmark to
`which § 2(fl ofthe Lanhan Act was specifically intended to apply. Section 2(f) of the Lanham Act provides:
`The Directormay accept as prima facic evidence thzi the mark has become distinctive, as used on or in connection with the applicant‘sgoods in commerce,
`proof ofsubstantially exclusive and continuous use thereofas a mark by the applicant in commerce for the five years before the date on which the claim of
`distinctiveness is made.
`
`Applicant asserted in itsprevious responses to Office rrtion that itsmark has become distinctive for the goods and services through applicant’: substantially exclusive and
`continuous use in commence ofthe mack TI-IE CHlI.DR.EN’S PLACE for at least five years, and that its mark TI-IE CH.lLDREN’S PLACE has acquired distinctiveness based
`on extensive sales formariy yea's, a claim which has been recognized and afiirrned by afederal court.
`Substantially Erclusive And Continuous Use
`In further aipport of its claim ofacquired distinctiveness, applicant now attaches the declaration of Ellen Cho, Senior Counsel to applicant, The Children's Place Services
`Company, LLC. As stated in Ms. Cho’s declaration, since 1970, applicait has used its THE CHILDREN'S PLACE trademark in connection with all ofthe categories of
`goods and services in the present application. Applicant owns xncontesable U.S. Regiaration No. 1.137.068 for the mark for retail store services specializing in children ’s
`clothing, which registered in 1980 based on use in commerce since 1970. Cho Decl. 1] 2.
`
`As shown in the current applicaion, rpplicant has been using the current stylization ofTI-IE C'HILDREN’S PLACE in astacked blue logo, in connection with all oft
`
`Such extensive and long-term use ofTHE CHIlLDREN’S PLACE mark for all of the categories ofgoods and services in the application means that the mark has acqu
`
`As shown in an excerpt from applicant’: 2008 10K report filed with the SEC, attached is Exhibit B to Ms. Cho’s declaration (which is also accessible on applicant‘s webmte
`:1 www.childnnsplace.com ), applicant’snet sales under THE CHILDREN’S PLACE mark for the fiscal year ending February 2008 exceeded $2 billion.
`Id at ‘[| 7.
`Federal Court Finding that THE CHILDREN’S PLACE m ark is Distinctive and Famous
`The Federal Court ofthe Southern District ofNew York has held that qaplicant “demonstrated that its [THE CHILDREN’S PLACE] mark is both distinctive and
`famous“ A copy of the decision, TCPIP Holding Co. v. Haar Communicatiari: lhc., 2004 U.S. Dist Lexis 13453, ’14(S.D.N.Y. 2004) is attached as Exhibit C to Ms. Cho’s
`declaration. The court based its holding of thefarne ofTH.E CHILDREN'S PLACE trademzk on:
`.
`.
`. uncoritroverted evidence showing that [Applicait] has recorded sales of approximately $2 billion and has spent over $33 million to advertise and
`promote its products from 1992 to 2001. . .This evidence indicates that [Applicant] has achieved a degree of fame in the retail marketplace comparable to
`stores such as The Gap or Kids “R" Us.
`
`Id. at "16.
`
`Applicant previously argued that the Eraminer should defer to the court’s well-founded conclusion ofthe mark’s fame and high level of acquired diainctiveness,
`which was bmed on overwhelming evidence that met the federal court’s high level ofscrutiny for relevance, credibility, and relidaility.
`The current Olfioe action staes
`that the court relied on :pplicant’s registrations forTl~IE CHILDREN’S PLACE, in which “children’s“ is disclaimed, to reach in conclusion that the mark was distinctive,
`and that the court did not consider whether the word "children it" in the mark is distinctive.
`
`The Examiner's argument is not well-founded. First, the court clearly relied on more than merely the registrations to reach its conclusion that THE CHILDREN'S
`PLACE mark is “distinctive and fnrnous." As quoted above, the court considered applicant's high level ofsales and extensive advertising to reach the conclusion that the
`mark is “both distinctive and famous." Fame is indeed the highest level ofacquired distinctiveness a mznk can achieve.
`Second, the Examiner’s interpretation ofthe court’s holding is illogical, in that it must assume that the court held that the “place" element ofapplicant’s mark is distinctive
`and famous, without regard to the “children’s" element ofthe mark. The opinion clearly states that the mark as a whole (a mark that incorporates that term “children's") is
`“distinctive and famous.“ Such aholding cannot be dissected to apply only to the portion of the mark that the Examiner believes is distinctive. Such areading ofthe holding
`is contradictory to the plain meaning ofthe court’s words.
`Descriptive Elements Need Not Be Disclainied Under § 2(1)
`Both the initial and current Oflice actions argue that because the “children ’s" element ofapp|icant’s mark is descriptive, it must be disclaimed However, the Ofiice action
`fails to provide any aithority for the proposition that in an application under§ 2(1), amark may be dissected, and the dacriptive part of the mark must be disclaimed The
`Eiraminer’s dissection ofthe mark in this manner is without basis in the law.
`
`There is no requirement that an applicant seeking registration under§ 2(f) prove that any paticular descriptive element ofthe mark, when used separately, has acquired
`distinctiveness. See In re Del E. Webb Corp., 16 U.S.P.Q.2d 1232 (ITAB 1990). Such a requirement would be absurd in cases such as this one, when certain individual
`elements ofthe mark, Le. , “children’s,” are not used separately, but are only used within the mark as awhole. Under the remoning ofthe Oflice action, in a§ 2(1) claim for a
`mark comprising two descriptive terms, both tenns would need to be disclaim ed, and a§ 2(f) claim could never be granted. This obviously would not be a logical application
`of the law.
`
`Applicant’s claim ofacquired distinctiveness as to “children ’s" simply means that when “children’s” is used within the mark as a whole, the rnark as avshole hm acquired
`distinctiveness.[1] The Oflice action improperly argues that, in eflect. the “children’s“ element ofthe mark, when held out alone, does not qualify for registration under§ 2
`(t). However, when the term “children's" is viewed, a required, within the context ofthe mark as awhole—Tl-IE CHILDREN'S PLACE——the only logical conclusion is tha
`the claim ofacquired distinctiveness is well-deserved
`Moreover, under§ 6(a) ofthe Lanliam Act, 15 U.S.C. 1056(2), while generic elements may be required to be disclaimed in an application with a§ 2(f) claim, this is not true
`for 1'25.-:r1,i:rzv-2 elements ofamark. bi re/lmerzcczrr btrtiriim ofCemfiei{ Pub1u:Ac:ozui.'a.ril:, 65 U.S.P.Q.2d 1972, 1981 (TIAB 2003) (an applicant seeking registration under
`§ Z(fl may be required to disclaim ageneric portion ofa mark but not a descriptive ponion ofamark). Applicant was not able to locate any cases in which the Board or any
`
`file://\\ticrs-ais-01\ticrsexpoit\HtmlToTifflnput\RFR000 l2009_O4_17_13__43_28_TTABO . ..
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`4/ 17/2009
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`

`
`Request for Reconsideration afier Final Action
`
`Page 4 of 5
`
`court required a disclaimer of descriptive elements ofamark seeking registration under§ 2(t). In addifion, all ofthe cases cited in 'I'MEP§ 12D2.02(e) upon which the initial
`Office action relies (no such cues are cited in the cun’ent Oflice action), also deal with disclaimers ofgeneric elements, not of descriptive elements.[2]
`CI-IILDREN’S Is Not Generic for Clothing or Stores
`
`The wrrent Oflice action also argues in the altemative, and for thefirst time, that CHILDREN’S must be disclairned in the current application, because the term is
`genefic, not deswiptive. and therefore. not capable of functioning as a trademark. Applicant strongly disagrees with this conclusion. While “children ‘s” may be deemed
`descriptive ofthe items sold in upplicmt’s stores or ofthe consumers of applicant’sgoods, it is not generic for such goods nrfor the store itself. The generic term for
`“children‘spants“ is not “children’s." it is “pmts;“ the generic term for a“d1ildren‘s store“ is not “chilchen’s," it is “store.“ The term “children‘s“ am only be considered
`generic when referring to children qua childnn. I.f“children’s“ was generic within applicant’s mark, applicant’smark would refer to a storewhene one goes to buy .
`.
`.
`children! Obviously, this is not the case aid is anonsensical conclusion.
`
`file://\\ticrs—ais-O1\ticrsexpor1\HtmlToTiffInput\RFRO00 1 2009_04_l7_l 3_43_28_TTABO . ..
`
`4/17/2009
`
`
`
`

`
`Request for Reconsideration after Final Action
`
`Page 5 of 5
`
`As discussed in detail above. the trademark THE CHILDREN ’S PLACEhas now acquired distinctiveness through many years of substantially exclusive and
`continuous use as required by § 2(t). In addition to such continuous and exclusive use, the volume and sales of clothing and related goods under the mark is incredibly high,
`exceeding 52 billion in net sales in 2008 alone. Applicant‘s mark is therefore aprime example ofthe type ofm ark to which § 2(t) Wu intended to apply. Based on the above,
`applicant requests thm the requirement for a disclaimer of CI-lILDREN’S be withdrawn and that the application be passed to publication.
`
`CONCLUSION
`
`[1] Applicant could have claimed acquired distinctiveness under§ 2(1) for the whale mark, .22 In re Del 1:’. Webb C0rp., but this was not necessary, because the Examiner did
`not request a disclaimer of“place." See TMEP l202.02(d) “. .
`. [Hithe applicant wishes, a claim of acquired distinctiveness under§ 2(1) may be made as to the entire mark or
`phrase that contains both inherently disinctive matter and matter that is not inherently distinctive."
`
`[2] A parenthetical for In re Creative Goldsmiths ofWashingtarr, Inc. cited in TMEP l202.02(e) refers to adisclaimer for “common descriptive“ terms. However “common
`descriptive" is actually an outdated synonym for “generic,“ and has nevermeant “descriptive." As explained in detail in In re K-TZoe Furniture. Inc, 29 U.S.P.Q.2d 1787
`(FedCir. 1994): “In 1988 the Lanham Trademark Act was amended to replace the designation ‘common descriptive’ .
`.
`. with the designation ‘gaieric,’ in order ‘to reflect
`current usage ofthe term by the courts and in general languge.’ The 'I'mde1nark Manual was revised to state that ‘In View of the amendment
`.
`. ., a distinction between
`generic names and apt or common descriptive names should no longer be made. "’ (citations omitted).
`
`EVIDENCE
`Evidence in the nature ofExhibits A ,B and C has been attadied.
`Original Pm? tile:
`http://tgate/PDF/RFR/2009/04/16/20090416123203112220 -77216094-O04_001/evi_631381729-121216017_._Exhfl)it_A_to__Cho_Decl._F0444289_.PDF
`Convermd PDF file(s) (3 pages)
`Evidence-1
`Evidence-2
`Evidence-3
`Orii_r,innl PDF file:
`httpJ/tgatelPDF/RFRf2009/D4l16/20090416123203112220-77216094-004_002/evi_631381729-121216017_._Exhfl>it_B_to_Cho_Declaration_F0444291_.PDF
`Converted PDF l1le(x) (2 pages)
`Evidence-1
`Evidence-2
`Original PDF file:
`http‘l/tgatelPDF/RFR/2009/04/l6/20090416123203112220-77216094-004_003/evi_631381729-121216017_._£whfl)it_C_to_Cho_Declaration_F04442.92_.PDF
`Converted PDF flle(r) (6 pages)
`Evidence-1
`Evidence-2
`Evidence-3
`Evidence-4
`mdeuce-5
`Evidence-6
`
`SIGNATURE(S)
`Declaration Signature
`Original PDF file:
`http://tgate/PDF/RFR/Z009/04/16/20090416123203112220-77216094-004_004/HS_631381729-
`121216017_._Declaration _of_Ellen_Cho_in_Support_of_Acq'uired_ F0444296_.PDF
`Converted PDF flle(s) (3 pages)
`Sigr_)ature Filel
`SQgature Filc2
`S'gnature File3
`Signatory's Name: Ellen Cho
`Signatory's Position: Senior Counsel
`
`Request for Reconsideration Signature
`Signature: Itnbi Date: 04/16/2009
`Signatory's Narne: TamarNiv Bessinger
`Signatory's Position: Attorney of Record
`
`The signatory has confinned that he/she is an attorney who is amember in good standing of the bar ofthe highest court ofaU.S. stae, which includes the District of
`Columbia, Puerto Rico, and other federal territories and posessions; and he/she is currently the aipliamfs attorney or an associate thereof; and to the best of hislher
`knowledge, if priorto his/her appointment anotherU.S. attorney or a Canadian attomey/agent not currently associated with his/her company/firm previously represented the
`qzpliaml in this matter. (1) the applicant has filed or is concurrently filing a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted
`the request ofthe prior representative to withdraw, (3) the applicant has filed a power of attorney appointing himlher in thismatter, or (4) the applicant's appointed U.S.
`atomey or Canadian attorneylagent has filed a power of attorney appointing him/her as an associate attorney in this matter.
`
`The qaplicant is filing aNotice o1'Appeal in conjunction with this Request for Reconsideration.
`
`Serial Number: 77216094
`Internet Trmsmission Date: Thu Apr 16 12:32:03 EDT 2009
`TEAS Stamp: USPTO/RFR-63.138. 172.9-20090416123203 1 12
`220-77216094-4307b77f660e97d.8ed10dda3fi7
`zi7fe69-N/A-N/A-200904 16 121216017096
`
`file://\\ticrs—ais—Ol\ticrsexport\H’tmlToTifilnput\R_FR000 l2009_O4_17_13_43_28__TTABO...
`
`4/ 1 7/'2009
`
`
`

`
`Int. CL: 42
`
`Prior U.S. CL: 101
`
`Reg. No. 1,137,068
`
`United States Patent and Trademark Office
`Registered Jun. 17, 1930
`
`SERVICE MARK
`
`Principal Register
`
`The Children's Place. Inc. (Delaware corporation)
`20 Gloria La.
`Fairfictd. NJ.
`
`07005
`
`For: RETAIL STORE. SBRV!CES SPECIALIZING
`IN CHILDREN'S CLOTHING AND TOYS. In CLASS 42
`(us. CL. 101).
`First use Feb. l, 1969; in commerce Aug. I, 1970.
`Owner of U3. Reg. Nos. 1,020,741 and 1,020,742.
`Without waiving any common law rights with respect
`thereto, applicant disclaims the word "Children's" apart
`from the mark as shown.
`
`Ser. No. 192,163. Filed Nov. 6, 1978.
`
`B. H. VERTIZ. Prirnary Examiner
`MARK HARRISON, Examiner
`
`. Exhibit A to Cho Decl.
`(1 of 3)
`
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`
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`
`

`
`Int. CL: 42
`
`. Prior U.S. CL: 101
`
`
`R .N . 1,020,741 _ ¢ %
`
`
`
`
`
`SERVICE MARK
`Prineipai Regfiter
`
`
`
`thechiiclnanhplace.
`
`The Children's Place, Inc. (Delaware corporation)
`10 Gloria Lane
`F9Jrfi=1d.NJ.
`
`For: RETAIL STORE SERVICES SPECIALIZING
`IN CHILDREN'S CL0l'H1NG. MATERNITY CLOTH-
`mo, cmuman-s FURNITURE, 1013 AND A0
`CESSORIBS, in CLASS 42 (15.8. CI... 101).-
`Pirsl use on or about Feb. 1, 1969; in commerce on or
`about Aug. 1, 1970.
`Without waiving any common law rights with 1-aspect
`thereto, applicant hereby disclaims tho word "Children's"
`apart from the mark in a whola.
`
`Ser. No. 25,296, med June 26, 1974.
`
`B. PARKER LIVINGSTON, 311., Examiner
`
`Exhibit A to Cho Dec].
`
`(3 of 3)
`
`

`
`([7 39¢kW§I..Z‘';}?‘.:E2
`
`FORM 10-K
`
`CHILDRENS PLACE RETAIL STORES INC - PLCE
`
`Filed: April 02, 2008 (period: February 02, 2008)
`
`Annual report which provides a comprehensive overview of theoompany for the past year
`
`Exhibit B to Cho Decl.
`
`(1 of 2)
`
`‘
`
`

`
`Fl“““°i“‘ C°"d““’“ 3"‘ R°5"“5 °f0P¢T3li0n8. and the financial statements and notes thereto included elsewhere in this Annual Rcpon on Form 10-K.
`Final Year Ended(1)
`
`
`Statement olaperllitnu Data
`Fcbmnry 2,
`
`(ll thausantlt: except per share dun):
`zoos
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`February 3,
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`All refemnces to our fiscal years refer to Our 52- or 53-week year ended on the Saturday nnrest to January 31 oftlto following year. For example, references to fiscal 200‘! mean the
`fiscal year ended February 2. 2008. All periods presented were 52-week yc:u'x, oxcopl for mutt 2006 which was . 53-week year.
`
`‘me statctnent of opcntions data for fiscal 2004 ittdttdes ten weeks of Disney Stores‘ operations from their Acquisition on No-.-entbet 21, 2004.
`
`.
`.
`Asset Impairment clnrgc: represent the write down of fixed amt: to {air value. In liscal 2007, we rooordcd $96.9 million in asset impaimtcnt charges, including $80.3 million nu
`impaimtents related to our decision to exit the Disney Store business. $l4.8 million in intpairmonts related to the our tlctzision to cease consmtclion on our Eutetsnn Lane
`administmtivc omen building, and $1.8 million of intpainnent related to l2 ttndcrpcrformlng stores. In llscal 2006, we recorded S17. I million in asset impxirmcnt charges‘ including
`$9.6 million in impairment: at 29 of our Mickey prototype stores, $7.1 million in disposal: ofproperty and equipment resulting primarily flout mt dccisiorts not in procncd with 1
`New York City Disney Store location and infitslntetttre invesrmetm that were written oil‘ in conjunction with our decision to form an a-cmnntcme allianco with I Disney affiliate in
`wlridl sclcol Disney Store ntcrolmutlise is sold on the diSll¢ySl|0})pillg.cOln website, and $0.4 million ofimpairmotu at five nuderperformittg stores. We impaired fixed asset: in
`undupcrlbtrning room in one stnre each year in fiscal 2005, fiscal 1004 and fiscal 2003. respectively.
`
`other costs include 86.1 million in costs associated primarily with the cancellation of the Disuty store remodeling |.lmgl'nlll and $5.9 million in lean: exit costs related to our
`decision not to proceed with the construction of lht: Emerson Lane adtnixtisnativc office building. (see Note l-in the Consolidated Notes to the Fintncial Statements).
`
`.
`.
`The extraordinary gum represents the hair value ofnet assets acquired in excess of the pttrcltnse price paid for the DSNA Bnsincs, met all tang-lived assets were written aft‘.
`
`.
`.
`.
`.
`W0 tiflfim wmp-r-blc mm sales H5 net sales fmtn stores that tnwe been open for at lens: 14 ttatl months an-ttl that lnwe not been substantially mmodetetz dnrmg that time. The Dr:-toy
`Stores entered our compttmhlc store snlrs base in fiscal 2006.
`
`Average net sales per store represents not sales lion: stores open throughout tlte full period divided by the number ofsttclt storcs, The Disney Stores were nut ittcltttlcd in zvetagc net
`sales pet store during fiscal 2004 since we did not own them for the full fiscal period.
`
`Source: CHILDRENS PLACE RETA, ‘I0-K, Aprll 02. 2008
`
`28
`
`Exhibit B to Cho Deal.
`
`(2 of 2)
`
`

`
`Page 1
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`FOCUS - l of2 DOCUMENTS
`
`TCPIP HOLDING CO., Plaintiff, - against - HAAR COMMUNICATIONS INC. and
`RICHARD S. HAAR, Defendants.
`
`99 Civ. 1825 (RCC)
`
`UNITED STATES DISTRICT COURT FOR THE SOUTHERN DISTRICT OF
`NEW YORK
`
`2004 US. Dist. LEXIS 13543
`
`July 19, 2004, Decided
`July 19, 2004, Filed
`
`PRIOR HISTORY: TCPIP Holding Co. v. Hoar Commune, Inc. 244 F.3d 88, 2001 US App. LEXIS 2867 (2d Cir.
`N.}’., 2001)
`
`DISPOSITION: [*1] Plaintiffs motion for summary judgment granted in its entirety.
`
`COUNSEL: For 'l‘CPlP Holding Company, Inc, Plaintiff: Keith E. Sharkin, LEAD ATTORNEY, Nims, Howes, Colli-
`son, Hansen & Lackerr, Thomas H. Curtin, LEAD ATTORNEY, King & Spalding, New York, NY.
`
`For I-iaar Communications Inc., Richard S. I-Iaar, Defendants: Adam Leitman Bailey, LEAD ATTORNEY, Law Firm
`Of Adam Leitman Bailey, New York, NY.
`
`JUDGES: RICHARD CONWAY CASEY, United States District Court Judge.
`
`OPINION BY: RICHARD CONWAY CASEY
`
`OPINION:
`
`MEMORANDUM OPINION & ORDER
`
`RICHARD CONWAY CASEY, United States District Court Judge:
`
`TCPIP Holding Co. ("Plaintiff"), operator of the children's clothing franchise "The Children's Place," sued Haar
`Communications Inc. and Richard S. Hoar nl (collectively, "Defendants") for cybersquatting, trademark infringement,
`unfair competition, and trademark dilution alter Defendant registered the domain name, "thechildrensplace.com" and
`sixty-six other domain names containing variations on the words "children" and "place." On May 27, 1999, the Court
`preliminarily enjoined Defendants from using these sixty-seven domain names and generally from using any ”colorablo
`imitation" of Plaintiffs mark. On December 9, 1999, the [*2] Court modified its earlier order to specifically enjoin De-
`fendants from using fourteen additional domain names. On February 28, 2001, the Second Circuit Court of Appeals
`affirmed the preliminary injunction as it related to several of the domain names that were "so clearly similar to ‘The
`Children's Place‘ that the differences are hardly noticeable." See TCPIP Holding Co. v. Haar Communications Inc., 244
`F.3d 88, I02 n. I 1 (2d Cir. 2001). The Court of Appeals remanded the case for fixrther proceedings and Plaintiff now
`moves for summary judgment. For the reasons set forth below, the motion is GRANTED.
`
`nl As a general matter, Mr. l-laar, the sole director, officer and employee of I-laar Communications Inc,
`would not typically be personally liable for the conduct of his corporation. However, this general rule is abro-
`gated whcn an individual actively and knowingly causes trademark infringement. See Fugazy In!'l Travel Group
`v. Stargazer, Ltal, 2003 (LS Dist. LEXIS 378, No. 02 Civ. 3373, 2003 WL 115220, at *2 (S.D.N.Y. Jan. 10,
`
`Exhibit C to Cho Decl.
`(1 of 6)
`
`

`
`2004 U.S. DisL LEXIS 13543, *
`
`Page 2
`
`2003); Mattel. Inc. v. Internet Dimensions Inc., 2000 US. Dist. LEXIS 9747. No. 99 Civ. 10066, 2000 WL
`973 745, at *9 (S. D.N. 1’. July I3, 2000). Accordingly, for the reasons set forth below, Mr. Haar may be held per-
`sonally liable for l-laar Inc.'s conduct.
`
`l‘° 3]
`BACKGROUND
`
`Pursuant to Local Civil Rule 56.1, Defendants were required to include a separate short and concise statement of
`any material facts as to which they contended there exists a genuine issue. In the absence of such a statement, all mate-
`rial facts set forth in Plaintiffs 56.1 statement may be deemed admitted. See .S'.D.N.Y. Local Civil R. 56. I(b),(c); Gian-
`nullo v. City ofNew York. 322 F.3d 139, I40 (2d Cir. 2003}; Urzited States v. All Right, Title & Interest in Real Property
`& Appurlenances, 77 F.3d 648, 657-58 (2.4 Cir. 1996).
`
`Defendants did not submit a controverting Rule 56.1 statement and thus failed to comply with Local Civil Rule
`56.]. n2 Nevertheless, because Richard Haar appears pro .92 the Court has overlooked the technical deficiency of the
`submission, see Zeno v. Cropper. 650 F. Supp. 138, I39 (S.D.N.Y. I986), and has viewed the record in the following
`manner: if there existed some dispute between Plaintiffs Rule 56.] statement and I-lanrs papers, the facts have been
`viewed in the light most favorable to Defendants. On the other hand, any facts in Plaintiffs Rule 56.1 statement which
`remain uncontroverled [*4] by Haar's papers have been accepted as true. See Dusanenko v. Malaney, 726 F.2d 82, 84
`(2d Cir. 1984); see also Mazza v. City ofNew York, I999 U.S. Dist. LEXIS 13192, No. 98 Civ. 2343, 1999 WL I289623.
`at *1 (E.D.N. 1’. July 13. 1999).
`
`n2 The response to Plaintiffs motion includes only Richard Haar's sworn affidavit. As a result, Haar has
`also failed to comply with Local Civil Rule 7.1. SeeS.D.N. 1’. Local Civil R. 7.1 ("All motions and all oppositions
`thereto shall be supported by a memorandum of law, setting forth the points and authorities relied upon in sup-
`port of or in opposition to the motion, and divided, under appropriate headings, into as many parts as there are
`points to be determined. Willful failure to comply with this rule may be deemed sufficient cause for the denial of
`a motion or for the granting of a motion by default. "). In light ofhis pro se status, the Court does not deem Rich-
`ard Haafs failure to comply with Rule 7. I grounds for the entry of a default.
`
`Plaintiff, through its approximately [*5] 450 stores, sclls children's clothing, toys and accessories under the mark,
`"The Children's Place." From 1992 to 2001, Plaintiff spent 13 33 million to advertise the mark. This advertising has
`helped to generate more than $ 2 billion in annual total net sales for Plaintiff.
`
`Since November 1999, Plaintiff has operated a website at the domain name "childrensplace.com," where customers
`may buy Plaintiffs products. From 1999 to 2001, sales through Plaintiffs website totaled 33 4 million. Thousands of cus-
`tomers have visited the website; for example, in March 2001 alone, the website had over 1.7 million hits (or approxi-
`mately 57,000 hits a day).
`
`Hear Communications, lnc., aNcw York corporation, and Richard l-laar, its president and sole employee, offer con-
`sulting and networking services in