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`903-2002
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`Us, p¢um&TMo1'clTM mu acpwz. azs
`IN THE UNITED STATES PATENT AND TRADEMARK Of
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOA1\u
`
`‘war
`
`In the matter of Application Serial No. 76/144353
`Filed on October 11, 2000
`For the mark VS
`
`Published in the Oficial Gazette on April 30, 2002
`
`INTERSHOE, INC.,
`
`OPPOSITION NO.
`
`Opposer
`
`NOTICE OF OPPOSITION
`
`C
`
`_
`
`VALENZA PO CORPORATION
`
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`NOTICE OF OPPOSITION
`
`lntershoe, Inc. (“Intershoe”), a corporation organized and existing under the laws
`
`of the State of New York, believes that it will be damaged by registration of the mark
`
`shown in Application Serial No. 76/144353 and opposes the same. A description of the
`
`applicant’s mark is as follows:
`
`Mark:
`
`VS (stylized)
`
`Serial No.:
`
`76/ 144353
`
`Filed:
`
`October 11, 2000
`
`Published:
`
`April 30, 2002
`
`Alleged Use: N/A — filed based on intent to use the mark in commerce
`
`Class:
`
`25
`
`Goods:
`
`Leather shoes, rubber shoes, golf shoes, basketball shoes, low
`shoes, heels, hiking shoes, half-boots, boots, beach shoes, sandals,
`slippers, tips for footwear, cleats for shoes, esparto shoes or
`sandals, straw shoes, wetsuits for waterskiing, raincoats, long
`
`09/06/2002 SIILSINI 00000194 76144353
`
`0! H3377
`
`300.00 09
`
`1
`
`NOTICE OF OPPOSITION
`
`

`
`7
`
`coats, half coats, blouson, suits, skirts, slacks, gentlemen‘s suits,
`trousers, overcoats, one-piece dresses, jackets, jumpers, jeans,
`parkas, aloha shirts, bathrobes, blouses, shirt yokes, shirt fronts,
`swimsuits, sweaters, sweatshirts, sweat pants, dress shirts,
`uniforms for sports, jerseys, Vests, cardigan jackets, camisoles, tank
`tops, polo shirts, pullovers, t-shirts, neckties, mufflers, bandanas,
`gloves for protection against cold, shawls, scarfs, stoles, socks,
`aprons, hats and caps, belts, children‘s clothes, namely, jackets,
`sweatpants, suits, skirts, pants, overcoats, topcoats, cloaks, rain
`coats, cardigans, sweaters, Vests, socks, gloves, mufflers, hats,
`suspenders, belt loops, belts and shoes.
`
`As grounds for its opposition, Intershoe alleges as follows:
`
`1. Applicant Valenza Po Corporation (“Valenza Po”) seeks to register the mark
`
`VS (stylized) for “leather shoes, rubber shoes, golf shoes, basketball shoes, low shoes,
`
`heels, hiking shoes, half-boots, boots, beach shoes, sandals, slippers, tips for footwear,
`
`cleats for shoes, esparto shoes or sandals, straw shoes, wetsuits for waterskiing, raincoats,
`
`long coats, half coats, blouson, suits, skirts, slacks, gentlemen‘s suits, trousers, overcoats,
`
`one-piece dresses, jackets, jumpers, jeans, parkas, aloha shirts, bathrobes, blouses, shirt
`
`yokes, shirt fronts, swimsuits, sweaters, sweatshirts, sweat pants, dress shirts, uniforms
`
`for sports, jerseys, vests, cardigan jackets, camisoles, tank tops, polo shirts, pullovers, t-
`
`shirts, neckties, mufflers, bandanas, gloves for protection against cold, shawls, scarfs,
`
`stoles, socks, aprons, hats and caps, belts, children‘s clothes, namely, jackets, sweatpants,
`
`suits, skirts, pants, overcoats, topcoats, cloaks, rain coats, cardigans, sweaters, vests,
`
`socks, gloves, mufflers, hats, suspenders, belt loops, belts and shoes" in International
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`Class 25, based on an intent to use the mark in commerce under Section l(b) of the
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`Trademark Act, 15 U.S.C. Section 105 l(b), as evidenced by the publication of Valenza
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`Po’s proposed VS mark in the Oficial Gazette dated April 30, 2002.
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`2
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`NOTICE or OPPOSITION
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`

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`2.
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`lntershoe owns U.S. Registration No. 2041978 for the mark VS for
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`“footwear, including shoes, boots and sandals”, which was filed and registered prior to
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`the filing date of Applicant’s trademark application for the mark VS (stylized). A true
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`and correct copy of a printout from the records of the Patent and Trademark Office
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`(“PTO”) for the aforementioned registration is attached hereto as Exhibit A.
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`lntershoe
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`has been using VS as a trademark for footwear since August 5, 1995.
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`3.
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`There is no issue as to priority. Valenza Po’s Application, which was filed
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`on October 11, 2000, is based on an intent to use the mark VS (stylized). On information
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`and belief, Valenza Po has not begun use of the mark before October 1 1, 2000 or August
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`8, 1995. Accordingly, Valenza Po’s filing date and eventual date of first use will both be
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`subsequent to Intershoe’s date of first use of its VS mark.
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`4.
`
`By virtue of Intershoe’s use of its VS mark, its efforts and expenditures of
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`considerable sums for advertising and promotional activities, and the excellence of its
`
`goods, lntershoe has developed valuable goodwill in its mark VS as described above.
`
`5.
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`Valenza Po’s proposed VS mark appears confusingly similar to Intershoe’s
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`VS mark in that the marks are identical, and the marks are for use in connection with
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`identical goods, in particular, footwear in the nature of shoes, boots and sandals.
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`6.
`
`Based on the above, registration and use of Valenza Po’s proposed VS
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`mark is likely to cause confusion, mistake or deception as to the source of Valenza Po’s
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`goods offered under its confusingly similar VS mark, especially in light of Valenza Po’s
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`plans to use the mark for a wide variety of footwear, shoes, boots and sandals in
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`competition with Intershoe’s footwear. Moreover, any such confusion will damage and
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`injure lntershoe in that persons familiar with Intershoe’s VS mark would be likely to
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`3
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`NOTICE 01? OPPOSITION
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`

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`confuse Valenza Po’s goods as being provided by Intershoe. Furthermore, any defect,
`
`objection or fault found with Valenza Po’s goods sold under its VS mark would
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`necessarily reflect upon and seriously injure the reputation which Intershoe has
`
`established for its goods sold under its VS mark.
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`7.
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`Moreover, registration and use by Valenza P0 of the mark VS will reduce
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`the goodwill associated with Intershoe’s VS mark.
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`8.
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`If Valenza P0 is granted the registration sought in Application Serial No.
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`76/ 144353, it would thereby obtain at least a prima facie exclusive right to use of its VS
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`mark. Such a registration would be a further source of damage and injury to Intershoe.
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`WHEREFORE, Intershoe prays for the following:
`
`a.
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`a finding that Intershoe has priority as to Valenza Po’s application
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`to register the VS mark in connection with footwear, shoes, boots and sandals;
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`b.
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`a finding that Valenza Po’s proposed VS mark is likely to cause
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`confusion with Intershoe’s VS mark;
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`c.
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`a final rejection of Application Serial No. 76/ 144353 and that the
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`mark therein sought for the goods identified therein be denied and refused.
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`Intershoe hereby gives notice under Rule 2. l22(d) of the U.S. Trademark Law
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`Rules of Practice that after hearing and in any appeal on this Opposition proceeding, it
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`will rely on its registration, PTO printouts of which are attached to this Notice of
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`Opposition as Exhibit A, as evidence in support of this Notice of Opposition.
`
`A duplicate copy of this Notice of Opposition and a check in the amount of $300
`
`covering the fee required under §2.6(l) are enclosed herewith. Any additional fees
`
`4
`
`NOTICE OF OPPOSITION
`
`

`
`required in connection with this Notice of Opposition should be debited to Deposit
`
`Account No. 08-1645 (Reference No. 36090-1007).
`
`Dated:
`
`June 28, 2002
`
`Respectfully submitted,
`
`HELLER EHRMAN WHITE & MCAULDVFE LLP
`
` Q.
`
`
`R. Cady
`
`275 Middlefield Roa
`
`Menlo Park, California 94025
`
`(650) 324-7137
`(650) 324-0638 (fax)
`
`Attorneys for Opposer
`INTERSHOE, INC.
`
`In the matter of Application Serial No. 76/144353
`Published in the Official Gazette on April 30, 2002
`
`CERTIFICATE OF MAILING
`
`I hereby certify that the Notice of Opposition of Intershoe, Inc. is being deposited
`with the United States Postal Service with sufficient postage as First Class Mail service in
`an envelope addressed to: Commissioner for Trademarks, BOX TTAB FEE, 2900 Crystal
`Drive, Arlington, Virginia 22202-3513 on July 31, 2002.
`
`DATED: July 31, 2002.
`
`;Margaret Mena
`
`NOTICE OF OPPOSITION
`
`

`
`;.’3i’-
`
`I
`
`In re:
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BO T
`
`Application No.:
`Applicant:
`Mark:
`
`76/144353
`Valenza Po Corporation
`VS
`
`International Class:
`
`25
`
`Publication Date:
`
`April 30, 2002
`
`INTERSHOE, INC.,
`Opposer
`
`OPPOSITION NO.
`NOTICE OF OPPOSITION
`
`V.
`VALENZA PO CORPORATION
`Applicant
`
`
`Commissioner for Trademarks
`
`Box TTAB, FEE
`Arlington, Virginia 22202-3513
`
`2900 Crystal Drive
`
`1l
`
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`
`09-08-2002
`
`Us. mm‘ TMOMM N am“ m
`
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`
`Dear Madarn/ Sir:
`
`TRANSMITTALLETTER
`
`We are attorneys representing Intershoe, Inc., a New York corporation. Enclosed are
`one original and one copy of a Notice of Opposition, filed by Intershoe, Inc. for the above-
`referenced trademark.
`
`Also enclosed is the required filing fee of $300.00. Please charge any deficiency in
`payment to our Deposit Order Account No. 08-1645 (Reference No. 36090-1007).
`
`Docket No. 36090-1007-6043
`
`

`
`Please address all correspondence to me at the address below. Please stamp and return
`to us the enclosed postcard to evidence your receipt of this document.
`
`Date: August 28, 2002
`
`Respectfully submitted,
`HELLER, EHRMAN, WHITE & MCAULIFFE
`
`By:
`
`375605 vOl.SV (8lTH01!.DOC)
`
`/“ ‘Y.
`
`
`
`s R. Cady
`275 Middlefiel
`
`Menlo Park, California 94025
`(650) 324-7137
`
`

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`TESS was last updated on Tue Aug 27 04:33:15 EDT 2002
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` (TARR contains current status, correspondence address and attorney ofrecordfor this
`mark. Use the "Back" button ofthe Internet Browser to return to TESS)
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`Typed Drawing
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`Word Mark
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`VS
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`Goods and Services IC 009. US 021 023 O26 O36 038. G & S: Eyeglasses, eyeglass cases, eyeglass
`lenses, eyeglass frames and sunglasses
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`Mark Drawing
`Code
`Serial Number
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`IC 014. US 002 027 O28 050. G & S: Jewelry, watches and watchbands
`(1) TYPED DRAW” JG
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`76145838
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`Filing Date
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`October 10, 2000
`
`Filed ITU
`Publisliefd for
`Opposition
`Owner
`
`FILED AS ITU
`December 11, 2001
`
`(APPLICANT) Intershoe, Inc. CORPORATION NEW YORK 57 Seaview
`Boulevard Port Washington NEW YORK 11050
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`I
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`’
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`1
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`Attorney of Record Harold J. Milstein
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`Prior Registrations 2041978
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`Type of Mark
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`TRADEMARK
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`PRINCIPAL
`Register
`Live/Dead Indicator LIVE
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`http://tess.uspto.gov/bin/gate.exe?f=doc&state=ha2njd.4.5
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`8/27/20,02