BULKY DOCUMENTS
`(exceeds 200 pages)
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`Proceeding] Serial No: 91165891
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`Filed: O 1 -06-2006
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`Title: Opposer’s Memorandum Of Law In Support Of
`][t’s Opposition To App1icant’s Motion for
`Summaxy Judgment
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`Part
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`1 of 1
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`Certificate of Mailing by Express Mail
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`TTAB
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`I hereby certify that this correspondence, and all the papers referenced herein, is being deposited with the United
`States Postal Services as Express Mail in an e velope addressed to: Commissioner for Trademarks, Trademark
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`13-1451,onthisdateDecember27,2005 TrialandAppealBoard,P.O.75/ exandria,VA2
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`ary 1'
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`In the Matter of Trademark Application No. 78442894
`For the Mark:
`TOMGIRL
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`June 14, 2005
`Published:
`_______________________________________________________________ __x
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`TOMMY HILFIGER LICENSING, INC.,
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`DANA LURIE,
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`Opposer,
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`Applicant.
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`_______________________________________________________________________________x
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`HllllllllllllllllllllIlllllllllllllllllllllllllll
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`01-06-2006
`V 5 campy 5 M/nor:/"M Mail 359! C! it“
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`Opposition No. 91165891
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`OPPOSER’S MEMORANDUM OF LAW IN SUPPORT OF ITS OPPOSITION
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`TO APPLICANT’S MOTION FOR SUMMARY JUDGMENT
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`Opposer,. Tommy Hilfiger Licensing, Inc. (“Hilfiger”) submits this memorandum of law
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`in opposition to Applicant, Dana Lurie’s (“Applicant”) Motion for Summary Judgment (the
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`“Motion”). Hilfiger respectfully requests that the Board deny Applicant’s Motion in its entirety
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`because Applicant has failed to illustrate that there are no material issues to be tried. On the
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`contrary, material issues of fact exist as to whether there is a likelihood of confusion between
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`App1icant’s Mark and Hilf1ger’s Marks.
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`INTRODUCTION
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`Hilfiger submits this opposition to Applicant’s Motion on the grounds that there are
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`triable issues of fact as to whether a likelihood of confusion between Applicant’s marks and
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`Hilfiger’s marks. Under these circumstances, Applicant’s Motion should be denied in its
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`entirety.
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`STATEMENT OF UNCONTROVERTED FACTS
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`Tommy Hilfiger Licensing, Inc.
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`1.
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`Hilfiger is one of the most well-known fashion companies in the United States and
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`throughout the world. For over 20 years, Hilfiger‘ has been engaged in the manufacture,
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`distribution and. sale of all types of apparel, apparel-related accessories, fragrance products, home
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`products, and many other types of products. Hilfiger sells its products in over 1,200 department
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`stores and specialty retail stores throughout the United States. In addition, Hilfiger operates its
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`own retail and specialty stores, as well as an Internet site, through which it sells its products.
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`Hilfiger has current annual worldwide sales of almost $1.8 billion per year. See Declaration of
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`Jade Huang; (“Huang Dec.”) 1] 4, submitted herewith; Huang Decl. Exhibit A.
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`2.
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`Since its inception, Hilfiger has manufactured, distributed, and sold its products under
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`the mark TOMMY HILFIGER, and shortly thereafter under the mark TOMMY, alone and in
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`combination with other words and various designs, stylized lettering, and logos (hereinafter
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`collectively the “TOMMY Marks”). See Huang Decl. 1] 5; Huang Decl. Exhibit B.
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`3.
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`Additionally, in 1996, Hilfiger began using the mark TOMMY GIRL for fragrances,
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`toiletries and clothing. Since that time, Hilfiger’s TOMMY GIRL fragrance products have
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`References to “Hilfiger" also include Hilfiger’s licensees, subsidiaries and affiliates.
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`consistently been among the best selling and most well-known fragrance products in the world.
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`See Huang Decl. 1] 6; Huang Decl. Exhibit C.
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`4.
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`Hilfiger has obtained numerous U.S. trademark registrations for the TOMMY Marks
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`and also specifically for the TOMMY GIRL mark. See Declaration of Mary Grieco (“Grieco
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`Dec.”), Exhibit A, submitted herewith.
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`5.
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`Hilfiger has filed several intent-to-use applications for its TOMMY Marks for which
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`Notices of Allowance have been issued. Grieco Decl. Exhibit B
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`6.
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`Hilfiger has several pending applications for its TOMMY Marks. Grieco Decl.
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`Exhibit C.
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`The TOMMY GIRL and the TOMMY Marks Are Famous Marks
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`7.
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`Since it began using the TOMMY GIRL mark and TOMMY Marks, Hilfiger has
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`engaged in extensive marketing and advertising of its products in virtually all types of media
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`including, but not limited to: print ads, outdoor and transit ads, trade advertising, store
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`advertising, television and cinema advertising, retail and in—store promotions such as brochures
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`and mailing cards. Huang Decl. 1] 7.
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`8.
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`During that time, Hilfiger has expended substantial sums of money on advertising and
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`sales promotion for such products bearing the TOMMY GIRL mark and TOMMY Marks
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`throughout the United States. Hilfiger currently expends over $35 million in advertising and
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`marketing. Moreover, Hi1f1ger’s licensees and retailers carrying Hilfiger merchandise expend
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`additional money on advertising and marketing that is not reflected in the figure above. See
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`Huang Decl. 11 8; Huang Decl. Exhibit A.
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`9.
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`Sales of TOMMY GIRL fragrance products alone were in excess of $42 million in 2004
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`and almost $41 million in 2005. Moreover, the amount spent by Hilfiger’s licensees on the
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`advertising and promotion of TOMMY GIRL and TOMMY products was approximately $23.9
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`million in 2004 and approximately $27.3 million in 2005. Hilfiger also contributes significant funds
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`to the advertising and promotion ofTOMMY GIRL and TOMMY products; however, these amounts
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`are not broken up by brand. In addition, Hilfiger has sponsored events using the TOMMY GIRL
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`Mark, including the recent sponsoring of a cheerleading competition in which it named the Tommy
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`Girl All-American Cheerleading Squad. Huang Decl. 1] 9; Huang Decl. Exhibit D.
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`10.
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`As a result of Hilfiger’s extensive sales and expenditures for advertising and
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`promotion of its apparel and other products, Hilfiger’s TOMMY GIRL mark and TOMMY
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`Marks are famous marks and have come to signify products originating with Hilfiger and to
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`symbolize Hilfiger’s goodwill. See Huang Decl.1] 10.
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`11.
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`Apparel and other products bearing Hilfiger’s TOMMY GIRL mark and TOMMY
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`Marks have become extremely well-known leading brands of such products in the United States.
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`A Google search of the words “Tommy Girl” and “Tommy Hilfiger” results in 486,000 hits. See
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`Huang Decl. 1] 1]; Huang Decl. Exhibit E.
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`12.
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`In addition, Hilfiger often receives unsolicited press coverage. See Huang Decl. 1] 12;
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`Huang Decl. Exhibit F.
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`AQglicant’s “TOMGIRL” Mark
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`13.
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`On June 14, 2005, App1icant’s application for the mark TOMGIRL for “T-shirts,
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`girl’s tops, shorts, sweatshirts, and caps” in International Class 25 (“TOMGIRL”) was published
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`for opposition in the Official Gazette.
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`I
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`14.
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`The application was filed based on intent to use under Section 1(b) of the Trademark
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`Act on July 6, 2004.
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`15.
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`Applicant’s Mark is confusingly similar to Hilfiger’s TOMMY GIRL mark in
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`particular and to Hi1figer’s TOMMY marks in general. See Huang Decl. 11 13.
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`16.
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`The goods for which Applicant seeks to register TOMGIRL in International Class 25
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`are identical and/or closely related to the goods and services for which Hilfiger uses and/or has
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`registered its TOMMY GIRL and TOMMY Marks. See Huang Decl. 1] 14.
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`17.
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`Applicant’s goods will likely be marketed through the same channels of trade and to
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`the same class of consumers as the goods and services of Hilfiger. See Huang Decl. 11 15.
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`18.
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`The consuming public is likely to erroneously believe that Applicant’s goods are
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`endorsed, licensed, or produced by or under the authority of Hilfiger, or to erroneously assume
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`that there is some other trade connection between Hilfiger and Applicant. See Huang Decl. 1] 16.
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`I.
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`SUMMARY JUDGMENT STANDARD
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`Summary judgment is only appropriate where “there is no genuine issue as to any
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`material fact.”2 C0pelands’Enterprises Inc. v. CNVInc., 945 F.2d 1563, 1565 (Fed. Cir.
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`1991)(citing Fed.R.Civ.P. 56(c)(emphasis added)). On a summary judgment motion, the movant
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`bears the burden of demonstrating the absence of any genuine issue of material fact, and that it is
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`entitled to judgment as a matter of law. See Copelands ’ Enterprises Inc., 945 F.2d at 1565
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`(moving party’s conclusory statement as to intent insufficient). In determining whether summary
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`judgment is appropriate, the Board shall consider “the pleadings, depositions, answers to
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`I
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`interrogatories, and admissions on file, together with the affidavits, if any” and summary
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`“The Trademark Rule of Practice, 37 C.F.R. § 2.116(a), makes Rule 56, Fed.R.Civ.P. applicable to all inter
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`‘ parties proceedings before the Board." Levi Strauss & Co. v. Genesco, Inc., 742 F.2d 1401, 1403 (Fed. Cir. 1984).
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`judgment s_hill only be granted where there is “no genuine issue as to any material fact”.
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`Fed.R.Civ.P. 56(c)(emphasis added).
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`When considering a motion for summary judgment, the evidence must be viewed in a
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`light most favorable to the nonmovant and all reasonable inferences must be drawn in the
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`nonmovant’s favor. Copelands ’ Enterprises Inc., 945 F.2d at 1566 (emphasis added). The
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`nonmoving party “need only present evidence from which a jury might return a verdict in
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`[its] favor.” Id. (emphasis added) (citing Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 257
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`(1986).
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`Under this controlling standard, the Applicant’s Motion must be denied.
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`II.
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`SUMMARY JUDGMENT IS IMPROPER BECAUSE THERE IS A
`QUESTION OF FACT AS TO WHETHER APPLICANT’S TOMGIRL MARK
`IS LIKELY TO BE CONFUSED WITH HILFIGER’S TOMMY GIRL AND
`TOMMY MARKS
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`Summary judgment is improper because Applicant has failed to show that no material issues
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`of fact exist.
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`Instead, Applicant relies on conclusory statements with no supporting law and no
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`supporting facts to back up these broad statements. For instance, Applicant generally states that
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`“Opposer (a) has failed to establish a primafacie case sufficient to rebut the presumption that the
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`[USPTO’s] Examining Attomey’s approval of Applicant’s Application ... was in accordance with
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`law . . . and does not, in any way, infringed (sic) on any trademark held or applied for by Opposer and
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`(b) the [USPTO’s] Examining Attomey’s approval of Applicant’s Application for a trademark
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`TOMGIRL was neither arbitrary nor capricious nor a Violation of law, rule or regulation. See
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`Applicant’s Motion for Summary Judgment (“SJ Motion”), at 1. Applicant has failed to cite to
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`any law to support her propositions and her assertions are incorrect.
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`Applicant states further that “Applicant’s mark TOMGIRL is not in anyway (sic) similar,
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`much less confusingly similar, to Opposer’s TOMMY GIRL mark and, or, to Opposer’s TOMMY
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`marks, nor is Applicant’s mark TOMGIRL identical or closely related to any mark Opposer uses and,
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`or, has registered to use.” SJ Motion, at 2. Applicant has failed to substantiate her argument
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`and the evidence cited herein is to the contrary.
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`A review of the evidence cited herein clearly illustrates that Applicant’s TOMGIRL Mark is
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`likely to be confused with Hilfiger’s TOMMY GIRL and TOMMY Marks; there is at least a factual
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`issue as to whether such confusion is likely. “The ultimate question of the likelihood of consumer
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`confusion has been termed a question of fact.” In re E.I. DuPont DeNem0urs & Co., 476 F.2d
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`1357, 1361, 177 USPQ 563 (CCPA l973)(citing Coca-Cola Co. v. Snow Crest Beverages, Inc., 162
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`F.2d 280 (1stC:ir. 1947), cert den. 332 U.S. 809, 68 S.Ct. 110 (1947)).
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`The factors to be considered in determining whether a likelihood of confusion exists between
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`two marks were enumerated by the DuPont Court. DuPont, 476 F.2d at 1361. These factors
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`include: 1) the similarity or dissimilarity of the marks in their entireties as to appearance, sound,
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`connotation and commercial impression; 2) the similarity or dissimilarity and nature of the goods or
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`services as described in an application or registration or in connection with which a prior mark is in
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`use; 3) the similarity or dissimilarity of established, likely to continue trade channels; 4) the
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`conditions under which and buyers to whom sales are made, i.e., impulse vs. careful, sophisticated
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`purchasing; 5) the fame of the prior mark (sales, advertising, length ofuse); 6) the number and nature
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`of similar marks i.n use on similar goods; 7) the nature and extent of any actual confusion; 8) the
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`length of time during and conditions under which there have been concurrent use without evidence
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`of actual confusion; 9) the variety of goods on which a mark is or is not used; 10) the market
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`interface between applicant and the owner of a prior mark; 11) the extent to which prior user has a
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`right to exclude others from use of its mark on its goods; 12) the extent of potential confusion, i.e.,
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`whether de minimis or substantial; and 13) any other established fact probative of the effect of use.
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`Id. at 1361.
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`The PTO should refuse to register a trademark that so resembles a registered mark “as to be
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`likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause
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`mistake, or to deceive.” 15 U.S.C. §§1052(d). A likelihood of confusion analysis considers all the
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`DuPont factors for which there is evidence but “may focus. . .on dispositive factors, such as similarity
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`of the marks and relatedness of the goods.” Han Beauty, Inc. v. Alberto—Culver Co., 236 F.3d 1333,
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`1336, 57 U.S.P.Q.2d 1557, 1559 (Fed. Cir. 2001); Herbko International Inc. v. Kappa Books Inc. , 64
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`U.S.P.Q.2d 1375, 1380 (Fed. Cir. 2002). In this matter, an analysis of all the factors is not necessary
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`since the dispositive factors include the similarity of the marks and the nature ofthe goods, the likely
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`marketing channels ofApp1icant’s goods, Hilf1ger’s fame, the variety of goods on which the Hilfiger
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`Marks are used a:r1d the substantial potential for confusion in the marketplace. Below is a discussion
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`of each of the relevant factors, which clearly illustrates that Applicant’s SJ Motion should be denied.
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`A. The Marks And Nature of the Goods Are Almost Identical in Appearance,
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`Sound, Connotation and Commercial Impression
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`There is no question that Applicant’s TOMGIRL Mark is almost identical to Hilfiger’s
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`TOMMY GIRL and TOMMY Marks and that the nature of the goods are identical.
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`Indeed,
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`Applicant’s TOMGIRL Mark so resembles Hilfiger’s TOMMY GIRL and TOMMY Marks that,
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`when used on or in conjunction with the goods of Applicant it is likely to (i) cause confusion, or to
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`cause mistake, or to deceive; and (ii) falsely suggest a connection with Hilfiger’s famous marks.
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`Applicant incorrectly argues that “[a]1though Opposer alleges it has registered the mark
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`. ‘TOMMY GIRL’, Opposer had disclaimed the exclusive right to the word ‘GIRL’ in such U.S.
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`trademark registrations...and Opposer has not set out the word ‘TOMGIRL’ in any copyright,
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`trademark or "intent-to-use’ application filed by, or on behalf of, Opposer.” See SJ Motion, at 2.
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`Applicant is mistaken and this point is irrelevant.
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`Although Hilfiger has disclaimed the exclusive right to the word “GIRL”, trademarks “it is
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`well settled that marks must be considered in their entireties, not dissected or split into component
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`parts and each part compared with other parts.” Genesco Inc. v. Martz, 66 U.S.P.Q.2d 1260, 1269
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`(TTAB 2003). “This is so because it is the entire mark which is perceived by the purchasing public,
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`and therefore, it is the entire mark that must be compared to any other mark.
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`It is the impression
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`created by the involved marks, each considered as a whole, that is important.” Id.; see also Kangol
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`Ltd. v. KangaRO0S U.S.A. Inc., 974 F.2d 161, 23 U.S.P.Q.2d 1386 (TTAB 1992); Franklin Mint
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`Corp. v. Master Mfg. Co., 667 F.2d 1005, 212 U.S.P.Q. 233 (CCPA 1981). When the marks are
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`viewed in their entirety, it is clear that TOMGIRL closely resembles and is almost identical to
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`TOMMY GIRL and the TOMMY Marks. TOMGIRL will likely confuse consumers and falsely
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`suggest that TOMGIRL is connected with Hilfiger.
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`Moreover, the nature of the goods described in Applicant’s application for TOMGIRL are
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`identical to Hilfiger’s goods. “It is not necessary for the goods to be identical or even
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`competitive in order for the use of similar marks to be likely to cause confusion, it being
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`sufficient that they are related in some manner so that consumers are likely to ascribe a common
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`source to the products if similar marks are used thereon.” In re Apparel Ventures, Inc., 229
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`U.S.P.Q. 2257, 229 (TTAB 1986). Here, the goods are both identical and competitive and Q
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`cause confusion.
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`Since its inception, Hilfiger has manufactured, distributed, and sold in commerce in the
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`‘ United States apparel and apparel-related accessories under the TOMMY Marks and Hilfiger has
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`been using the TOMMY GIRL mark for clothing, fragrances and toiletries since 1996. Huang
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`Decl. 1111 5-6; Huang Decl. Exhibits B and C. Applicant has filed for registration of the
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`TOMGIRL Mark for “T-shirts, girl’s tops, shorts, sweatshirts, and caps” in International Class
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`25. Since Hi1figer’s TOMMY and TOMMY GIRL Marks are used on apparel, including t-
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`shirts, girl’s tops, shorts, sweatshirts and caps, as well as other goods, the nature of the
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`goods are identical. See Huang Decl., Exhibits B and C.
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`These factors clearly weigh heavily in Hilfiger’s favor; at the very least, the factual record
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`viewed in the light most favorable to Hilfiger, indicates that there is a triable issue of fact.
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`B. The Goods Are Likely to be Marketed Through the Same Channels of Trade
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`As a result of Hilfiger’s world—wide fame, marketing and distribution efforts, Applicant’s
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`goods are likely to be marketed through at least some of the same channels of trade. For over 20
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`years, Hilfiger has been engaged in the manufacture, distribution and sale of all types of apparel
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`and apparel.-related accessories, fragrance products, home products, and many other types of
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`products. Hilfiger sells its products in over 1,200 department stores and specialty retail
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`stores throughout the United States. Moreover, Hilfiger operates its own retail and specialty
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`stores, as well as an Internet site, through which it sells its products. Hilifger has current annual
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`worldwide sales of almost $1.8 billion per year. Huang Decl. 1] 4; Huang Decl., Exhibit A.
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`C. Hilfiger’s TOMMY GIRL and TOMMY Marks are Famous Marks
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`As discussed above, Hilfiger’s TOMMY GIRL and TOMMY Marks have achieved great
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`strength and fame throughout the United States as evidenced by extensive advertising and vast
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`consumer recognition. As strong marks, Hilfiger’s TOMMY GIRL and TOMMY Marks are
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`afforded a broad scope of protection under the Lanham Act. See Mobil Oil Corp. v. Pegasus
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`p Petroleum Corp., 818 F.2d 254, 258, 2 U.S.P.Q.2d 1677, 1682 (2d Cir. l987)(PEGASUS flying
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`horse symbol); Giant Food, Inc. v. Nation ’s Foodservice, Inc., 710 F.2d 1565, 1570, 218
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`U.S.P.Q. 390, 395 (Fed. Cir. 1983)(Opposer’s GIANT marks had “acquired considerable fame”
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`in one region of the country, a factor “which weighs in favor in determining likelihood of
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`confusion”). As noted by the Board in R.J. Reynolds Tobacco Co. v. R. Seeling & Hille, 201
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`U.S.P.Q. 856, 860 (T.T.A.B. 1978):
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`[I]t is well recognized that the law today rewards a famous or well known mark
`with a larger cloak of protection than in the case of a lesser known mark because
`of the tendency of the consuming public to associate a relatively unknown mark
`with one to which they have long been exposed if the mark bears any resemblance
`thereto.
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`See also Specialty Brands Inc. v. Coffee Bean Distributors, Inc., 748 F .2d 669, 675, 223 U.S.P.Q.
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`1281, 1284 (Fed. Cir. 1984)(“The fame of a trademark may affect the likelihood purchasers will
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`be confused inasmuch as less care may be taken in purchasing a product under a famous name.”).
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`As Professor McCarthy has stated: “the rationale is that the more distinctive, unique and well-
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`known the mark, the deeper is the impression it creates upon the public’s consciousness and the
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`greater the scope: of protection to which it is entitled.” 2 J. Thomas McCarthy, McCarthy on
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`Trademarks and Unfair Competition § 11:73 (4th ed. 2005).
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`The broad scope of protection afforded to famous marks was highlighted by the Federal
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`Circuit Court of Appeals in Kenner Parker Toys Inc. v. Rose Art Industries, Inc., 963 F.2d 350,
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`22 U.S.P.Q.2d 1453 (Fed. Cir.) cert. denied, 113 S.Ct. 181 (1992), in which the Court held that
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`FUNDOUGH is confusingly similar to PLAY-DOH for modeling compounds. The Court noted
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`that “fame of the prior mark plays a dominant role in cases featuring a famous or strong mark.”
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`Kenner, 963 F.2d at 352, 22 U.S.P.Q.2d at 1456. The Court further noted that: “a mark with
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`extensive public recognition and renown deserves and receives more legal protection than an
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`obscure or weak mark” and “the Lanham Act’s tolerance for similarity between competing marks
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`varies inversely with the fame of the prior mark. As a mark’s fame increases, the Act’s tolerance
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`for similarities in competing marks falls.” Kenner, 963 F.2d at 353, 22 U.S.P.Q.2d at 1456. The
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`strength of a mark is “usually the same as its economic and marketing strength.” McCarthy,
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`McCarthy on Trademarks and Unfair Competition § 11:73.
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`As strong marks, Hilfiger’s TOMMY GIRL and TOMMY Marks are entitled to the
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`broadest scope of protection under the Lanham Act and this factor weighs heavily in Hilfiger’s
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`favor.
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`D. The Variety of Goods on Which the Marks Are Used
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`The wider the use of the marks, the stronger the marks and the more likely confusion will
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`arise when consumers see the mark on goods in the marketplace. See Uncle Ben ’s Inc. v.
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`Stubenberg International Inc., 47 U.S.P.Q.2d 1310, 1313 (TTAB 1998). In addition to using its
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`marks on apparel, Hilfiger uses the TOMMY and TOMMY GIRL Marks on other items,
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`including, but not limited to apparel-related accessories, fragrance products and home products.
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`See Huang Decl. 1] 4. Thus, this factor weighs heavily in Hilfiger’s favor.
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`E. The Potential Confusion is Substantial
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`As discussed above, Hilfiger’s TOMMY GIRL and TOMMY Marks have achieved great
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`strength and fame throughout the United States as evidenced by extensive advertising and vast
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`consumer recognition. Because Hi1figer’s marks are so well-known and so famous, the potential
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`for confusion is substantial. The consuming public is likely to erroneously believe that
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`App1icant’s goods are endorsed, licensed, or produced by or under the authority of Hilfiger, or to
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`erroneously assume that there is some other trade connection between Hilfiger and Applicant.
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`See Huang Decl. 1[ 16. Thus, this factor weighs in favor of Hilfiger.
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`A review of the DuPont factors illustrates that there is a likelihood of confusion.
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`Applicant has not even attempted to evaluate these factors because upon review, they
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`undisputedly illustrate that there is a likelihood of confusion between App1icant’s TOMGIRL
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`Mark and Hi1figer’s TOMMY GIRL and TOMMY Marks; at the very least, the factual record
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`viewed in. the light most favorable to Hilfiger, indicates that there is a triable issue of fact. Thus,
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`App1icant:’s Motion should be denied in its entirety.
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`CONCLUSION
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`Based on the foregoing Hilfiger respectfully requests that App1icant’s Motion be denied
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`in its entirety.
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`Dated: New York New York
`Decemberi_-:1 2005
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`DREIER LLP
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`ry L. Grieco, Esq.
`Safia A. Anand, Esq.
`499 Park Avenue
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`New York, New York 10022
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`(212) 328-6100
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`Attorneys for Opposer
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`CERTIFICATE OF SERVICE
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`I hereb_y certify that on this day, Decemberzl, 2005, a true and correct copy of the
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`foregoing documents, entitled
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`OPPOSER’S MEMORANDUM OF LAW IN SUPPORT OF ITS OPPOSITION
`
`TO APPLICANT’S MOTION FOR SUMMARY JUDGMENT
`
`DECLARATION OF JADE H.J. HUANG AND EXHIBITS IN SUPPORT OF TOMMY
`HILFIGER LICENSING, INC.’S OPPOSITION TO APPLICANT’S MOTION FOR
`SUMMARY JUDGMENT
`
`DECLARATION OF MARY L. GRIECO AND EXHIBITS IN SUPPORT OF
`TOMMY HILFIGER LICENSING, INC.’S OPPOSITION TO APPLICANT’S MOTION
`FOR SUMMARY JUDGMENT
`
`were served upon Applicant by prepaid, first class U.S. mail, addressed as follows:
`
`Dana Lurie
`8445 NW 62"“ Avenue
`
`Parkland, FL 33067-5021
`
` L. GRIECO
`
`

`
`Certificate of Mailing by Express Mail
`
`I hereby certify that this correspondence, and all the papers referenced herein, is being deposited with the United
`States Postal Services as Express Mail in an e velope addressed to: Commissioner for Trademarks, Trademark
`Trial and Appeal Board, P.O. Box 1
`'
`51, on this date December 27, 2005
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of Trademark Application No. 78442894
`For the Mark:
`TOMGIRL
`
`June 14, 2005
`Published:
`--------------------------------------------------------------- -—x
`
`TOMMY HILFIGER LICENSING, lNC.,
`
`DANA LURIE,
`
`Opposer,
`
`Applicant.
`
`——————————————————————————————————————————————————————————————————————————————-X
`
`lllllllIllllllllllllllllllllllllllllllllllllllllll
`
`01-06-2006
`
`Opposition No. 91 165 891
`
`DECLARATION OF MARY L. GRIECO AND EXHIBITS IN SUPPORT OF
`TOMMY HILF'IGER LICENSING INC.’S OPPOSITION TO APPLICANT’S MOTION
`FOR SUMMARY JUDGMENT
`
`Mary L. Grieco, being warned that willful false statements and the like are punishable by fine
`
`or imprisonment, or both, under Section 1001 of Title 18, United States Code, states:
`
`1.
`
`I am an attorney licensed to practice law in the States ofNew York and California and
`
`in Washington, D.C.
`
`I am an attorney for the Opposer, Tommy Hilfiger Licensing, Inc. and its
`
`related entities (hereafter collectively “Hilfiger”).
`
`2.
`
`I am one of the attorneys responsible for maintaining Hilfiger’s trademarks in the
`
`United States.
`
`

`
`3.
`
`Submitted herewith collectively as Exhibit A are true and correct copies of
`
`Certificates of Registration for the following trademarks, which are owned by Hilfiger:
`
`Mark
`
`Reg./Serial No.
`
`Class
`
`TOMMY GIRL
`
`TOMMY GIRL
`
`TOMMY GIRL
`
`TOMMY GIRL
`
`TOMMY GIRL
`
`TOMMY
`
`TOMMY
`
`TOMMY
`
`TOMMY
`
`TOMMY
`
`TOMMY
`
`TOMMY .COM
`
`TOMMY.COM
`
`TOMMY’ S
`
`TOMMY BABY
`
`2,499,283
`
`2,145,523
`
`2,159,761
`
`2,409,542
`
`2,449,356
`
`1,998,783
`
`2,389,024
`
`2,387,923
`
`2,475,142
`
`2,619,392
`
`2,772,857
`
`2,341,324
`
`2,567,913
`
`2,242,152
`
`2,668,186
`
`2,785,929
`
`25
`
`3
`
`3
`
`3
`
`3
`
`3
`
`25
`
`9
`
`25
`
`14
`
`18
`
`42
`
`25
`
`3
`
`25
`
`25
`
`TOMMY SPORT
`
`TOMMY HILFIGER
`
`TOMMY HILFIGER
`
`TOMMY HILFIGER
`
`TOMMY HILFIGER
`
`TOMMY HILFIGER
`
`TOMMY HILFIGER
`
`TOMMY HILFIGER
`
`TOMMY HILFIGER
`
`TOMMY HILFIGER
`
`TOMMY HILFIGER
`
`TOMMY HILFIGER
`
`TOMMY HILFIGER
`
`TOMMY HILFIGER
`TOMMY HILFIGER
`
`TOMMY HILFIGER & DESIGN
`TOMMY 1-IILFIGER & DESIGN
`
`TOMMY HILFIGER & DESIGN
`TOMMY HILFIGER & DESIGN
`
`2,617,339
`
`1,978,987
`
`1,995,802
`
`1,398,612
`
`1,738,410
`
`1,833,391
`
`2,162,940
`
`2,103,148
`
`2,239,844
`
`2,275,051
`
`2,352,800
`
`2,3 51,825
`
`2,286,255
`2,485,457
`
`2,575,670
`2,648,299
`
`2,025,974
`2,634,237
`
`TOMMY HILFIGER & DESIGN
`
`2,522,274
`
`TOMMY HILFIGER WOMAN
`TOMMY HILL
`TOMMY JEANS
`
`2,941,277
`1,173,426
`1,812,970
`
`14
`
`3
`
`3, 18, 25
`
`25
`
`25, 42
`
`25
`
`25, 14
`
`9
`
`21, 24
`
`20, 21, 24, 27
`
`21, 24
`
`20
`
`42
`14, 20
`
`25
`25
`
`3
`3
`
`9
`
`25
`25
`
`

`
`25
`
`3 4
`
`2
`
`35
`
`16, 24
`
`16, 24
`
`TOMMY JEANS
`
`TOMMY JEANS
`
`TOMMYHILFIGER.COM
`
`2,407,566
`
`2,877,920
`
`2,341,325
`
`TOMMY HILFIGER & DESIGN
`
`76/167,488
`
`TOMMY HILFIGER
`
`76/594,314
`
`TOMMY HILFIGER & DESIGN
`
`76/594,313
`
`4.
`
`Submitted herewith collectively as Exhibit B are true and correct copies ofNotices of
`
`Allowance, which have been issued for the intent-to-use applications for the following Marks:
`
`Mark
`
`Serial No.
`
`Class
`
`TOMMY GEAR
`
`TOMMY.COM
`
`TOMMY.COM
`
`76/125,596
`
`75/752,765
`
`75/752,763
`
`25
`
`41
`
`35
`
`5.
`
`Submitted herewith collectively as Exhibit C are true and correct copies of the
`
`following pending trademark applications:
`
`Mark
`
`Serial No.
`
`Class
`
`TOMMY HILFIGER
`
`TOMMY HILFIGER & DESIGN
`
`78/531,780
`
`78/520,904
`
`26
`
`14
`
`I declare under penalty of perjury under the laws of the United States that the foregoing is
`
`true and correct.
`
`Executed on this 27th day of December 2005 at New York, New York.
`
`
`
`/#Grieco
`
`

`
`EXHIBIT A
`
`

`
`Int. Cl.: 25
`
`Prior U.S. C1s.: 22 and 39
`Reg. No. 2,499,283
` United States Patent and Trademark Office
`Registered Oct. 23, 2001
`________________________________
`
`TRADEMARK
`PRINCIPAL REGISTER
`
`TOMMY GIRL
`
`TOMMY HILFIGER LICENSING,
`WARE CORPORATION)
`913 N. MARKET STREET
`WILMINGTON, DE 19801
`
`INC.
`
`(DELA-
`
`FOR: CLOTHING FOR WOMEN AND CHIL-
`DREN, NAMELY, T-SHIRTS, SWEATSHIRTS AND
`CAPS. IN CLASS 25 (U.S. CLS. 22 AND 39).
`
`FIRST USE 9-1-1996; IN COMMERCE 9-1—1996.
`
`OWNER OF U.S. REG. NOS. 2,124,016, 2,162,940
`AND OTHERS.
`
`NO CLAIM IS MADE TO THE EXCLUSIVE
`RIGHT TO USE "GIRL", APART FROM THE MARK
`AS SHOWN.
`
`SER. NO. 75-441,515, FILED 2-24-1998.
`
`DAVID H. STINE, EXAMINING ATTORNEY
`
`
`gm...‘r.r-‘..._m-;~.‘.I;.*.a
`
`-‘,5...,_m._‘_..-:,.‘._..2,.
`
`
`
`
`
`
`
`
`.,-g‘-'...“u’.n.‘:d,-3‘>«.'.\.¢'-M-ri«.»'.'-‘-.s=:r/.'n;«'-sea-it-23::-.4-V-:-..».~..;a;:.:r.az"Ms.;‘can'.eflIi'.ua‘
`
`
`

`
`Int. Cl.: 3
`
`Reg. No. 2,145,523
`Prior U.S. Cls.: 1,, 4, 6, 50, 51, and 52
`
`
`United States Patent and Trademark Office
`Registered Mar. 17,1993
`
`TRADEMARK
`PRINCIPAL REGISTER
`
`TOMMY GIRL
`
`INC. (l)l3LA-
`
`TOMMY IIILFIGER LICENSING.
`WARE CORPORATION)
`913 N. MARKET STREET
`w1
`N
`,D
`E I980‘
`LMI GTON
`FOR: COLOGNZES AND BODY LOTIONS. IN
`CLASS 3 (us. CLS. I, 4, 6, 50, 5| AND 52).
`
`FIRST
`9-0-1996‘
`
`USE
`
`0-U—l‘)%;
`
`IN
`
`COMMERCE
`
`SN 75-976,280. FILED 3-27-1996.
`
`EDWARD NELSON, EXAMINING ATTORNEY
`
`

`
`Int. C1.: 3
`
`Reg. No. 2,159,761
`Prior U.S. Cls.: 1, 4, 6, 50', 51, and 52
`
`- United States Patent and Trademark Office Registered May 19, 1993
`
`TRADEMARK
`PRINCIPAL REGISTER
`
`TOMMY GIRL
`
`TOMMY HILFIGER LICENSING, INC. (DELA-
`WARE CORPORATION)
`913 N. MARKET STREET
`WILMINGTON. DE 19801
`
`‘
`
`STICK AND LIP GLOSS, IN CLASS 3 (U.S. CLS.
`1, 4, 6, 50, 51 AND 52).
`FIRST USE
`9-1-1996;
`9-1-1996.
`
`IN COMMERCE
`
`PERSONAL DEODORANTS AND
`FOR:
`ANTI-PERSPIRANTS;
`SHOWER GEL;
`L11’-
`
`SN 75-977,128, FILED 3-27-1996.
`
`EDWARD NELSON, EXAMINING ATTORNEY
`
`

`
`:
`
`Int. Cl.: 3
`
`I P ' U.S. Cl .:
`Reg. No. 2,409,542
`1’ 4’ 6’ 59’ 51’ “"1 52
`"°'
`5
`United States Patent ‘and Trademark Office
`Registered Nov. 23, 2000
`
`
`'
`
`TRADEMARK
`PRINCIPAL REGISTER
`
`TOMMY GIRL
`
`IN COMMERCE 3-0-1997.
`FIRST USE 3-0-I997;
`SN 75—979.74I. FILED 3-27—|996.
`
`DWARD NELSON, EXAMINING ATTORNEY
`
`_E
`
`
`
`FOR: PERFUME; EAU DE TOILETFE; BODY
`‘CREAMS, AND GELS; SOAPS FOR PERSONAL USE,
`‘IN CLASS 3 (US. CLSL I, 4, 6, 50, 5| AND 52).
`
`TOMMY HILFIGER LICENSING.
`CORPORATION)
`‘9I3 N. MARKET STREET
`WILMINGTON. DE I980|
`
`INC. (DELAWARE
`
`

`
`Int. CL: 3
`
`Prior U.S. CIs..: 1,“4, 6, 50,51, and 52
`Reg. No.
`2
`v
`,...,.l,.
`.
`,.
`.
`-__.._...
`.-._
`..
`.
`.
`..
`
`United States Patent and Trademark Office Registered May 8,2001
`
`.
`
`TRADEMARK
`PRINCIPAL REGISTER
`
`TOMMY GIRL
`
`INC.
`
`(DELA-
`
`TOMMY HILFIGER LICENSING,
`WARE CORPORATION)
`913 N. MARKET STREETI
`WILMINGTON’ DE U80]
`FOR: SHAMPOO FOR THE HAIR, AND CONDI-
`TIONER FOR THE HAIR AND STYLING GELS. IN
`CLASS 3 (U.S. CLS. I. '1, 6, 50, SI AND 52).
`
`FIRST USE 4-0-I999; IN COMMERCE 4-0-I999.
`
`SN 75-079,3l9, FILED 3-27-I996.
`
`EDWARD NELSON, EXAMINING ATTORNEY
`
`

`
`Int. Cl.: 3
`
`=
`
`T
`
`{
`
`1
`
`Prior U.S. CIs.: 1, 4, 6, 50, 51, and 52
`_
`Reg. No. 1,998,783
`_
`
`Unlted States Patent and Trademark Offlce
`Registered Sep.3,1996
`_____________________________
`
`TRADEMARK
`PRINCIPAL REGISTER
`
`TOMMY
`
`TOMMY HILFIGE.R LICENSING. INC. (DEI.A-
`WARE CORPORATION)
`913 N. MARKET STREET
`WILMINGTON, DE 19801
`
`SOAPS FOR PERSONAL USE. IN CLASS 3 (U.S.
`CLS. 1, 4, 6, 50, 51 AND 52).
`FIRST USE
`5-0-1995;
`IN COMMERCE
`5-0-1995.
`
`FOR: COSMETICS, NAMELY COLOGNE, CO-
`LOGNE SPRAY, AFTER~SHAVE AND AFTER-
`SHAVING
`BALMS,
`DEODORANTS
`AND
`
`SN 74—626,649, FILED 1-27-1995.
`
`LINDA E. BLOHM, EXAMINING ATTORNEY
`
`

`
`Int. CL: 25
`
`Prior U.S. Cls.: 22 and 39
`
`Reg_ No_ 2,389,024
`Regisiered Sep. 26, 2000
`
`TRADEMARK
`PRINCIPAL REGISTER
`
`TOMMY
`
`TOMMY ”'LF‘VGER UCENSWG’ INC’ (DELAWARE
`C°“"0R"T'°”’
`_
`9” N- MARKET STREET
`WILMINGTON, DE I980]
`
`s, SHORTS, OVERALLS, HATS, AND CAPS, IN
`JcEL;I‘\Nss 25 (us. CLS. 22 AND 39),
`FIRST USE 12-0-1987; IN COMMERCE I2-0-1987.
`OWNER OF u.s. REG. NOS.
`l,398,6l2, 2,l62,940
`
`FOR CLOTHING FOR MEN WOMEN AND CH“,
`,
`TSHIRTS,
`'S3\';/la-TER’;’Ag'l+[ik‘T’;s
`MC5,‘2g$S, COATS,
`
`SER. NO. 75-407.975. FILED |2—l9—l997.
`DAVID H. SIINE, EXAMINING ATTORNEY
`
`

`
`mt. C1,: 9
`
`Reg. No_ 2,387,923
`Phor U.S. Cls.: 21, 23, 26, 36 and 38
`
`gnited States Patent and Trademark Office Registered Sep. 19,2000
`
`TRADEMARK
`
`PRINCIPAL REGISTER
`
`TOMMY
`
`TO MY HILFIGER LICENSING,
`C RPORATION)
`9'3 N-MARKET STREET
`WILMINGTON, DE I980!
`F0 : SUNGLASSES, EYEGLASSES AND EYE-
`
`INC. (DELAWARE
`
`OWNER OF U.S. REG. NOS.
`AND OTHERS.
`v
`T ENA EIN HE ARK DENT [E
`INDI{VIDUA:/L WHgSE OONSENT IS ()1: RE€OR=).lNG
`
`l,738,4l0, 2,l62,94-0
`
`26, 36 AND 38).
`FIRIST