`ESTTA233373
`ESTTA Tracking number:
`08/28/2008
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91172486
`Defendant
`PHARD S.P.A.
`MICHAEL J. STRIKER
`103 E NECK ROAD
`HUNTINGTON, NY 11743
`UNITED STATES
`striker@strikerlaw.com
`Opposition/Response to Motion
`Michael J. Striker
`striker@strikerlaw.com
`/Michael J. Striker/
`08/28/2008
`PHARD.PDF ( 133 pages )(16713101 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFEICE
`BEFORE THE TRADEMARK TRIAL & APPEAL BOARD
`
`‘ROCKET TRADEMARKS PTY LTD,
`
`.
`
`Opposer,
`
`V
`
`PHARD S.P.A.,
`
`Applicant.
`l
`
`\./§I\./\J§/§/€§)‘§J
`
`Opposition No. 91172486
`
`APPLICANTS
`
`MEMORANDUM IN OPPOSITION TO
`
`MOTION FOR SUMMARY JUDGMENT
`
`August 27, 2008
`
`Applicant, Phard S.P.A., hereby opposes Opposer’s Motion for Summary
`
`Judgment:
`
`APPL|CANT’S MARK DIFFERS SUBSTANTIALLY FROM ANY MARK
`ALLEGED BY OPPOSER IN THIS PROCEEDING.
`
`It is at the outset emphasized that Applicant’s mark clearly indicates as its
`
`dominant feature the designation ZU.
`
`It is well to remember that Applicants mark is not
`
`the word Element alone but consists of the following:
`
`
`
`I-IE'LEMEl.l.I'pl'5
`
`
`
`It will be clearly seen that the dominant feature which would be retained in
`
`the memory of any viewer of
`
`the mark is
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`the non-descriptive arbitrary coined
`
`designation ZU. The word elements appears in much smaller letters than the size of
`
`the word ZU, and appears at the bottom of the mark where it would be least noticed.
`
`Thus, it cannot be said that themarks are either identical or even confusingly similar.
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`The sole similarity is the word elements and it will be seen that this word is so
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`commonly used in connection with the relevant goods that consumers will not be
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`confused as to its contemporaneous use, particularly where the dominant feature of
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`Applicant’s mark is not remotely similar to anything alleged by Opposer.
`
`APPL|CANT’S INTERNATIONAL CLASS 16 LISTING OF GOODS
`
`Applicant’s Trademark application, Serial No. 76/519,886, includes three
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`classes. All three classes have been opposed.
`
`One of the opposed classes is
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`International Class 16 in which the
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`following goods have been set forth in Applicant’s application:
`
`“Printing paper, postcard paper, wrapping paper, writing and
`drawing paper, address and shipping adhesive labels,
`notebooks, memo paper, sketch books, coin, photograph
`and stamp albums, pencils, pens, crayons, pastels, rubber
`erasers,
`photograph mounts,
`photographs, magnetic
`blackboards, drawing paper,
`letter holders, writing tablets,
`calendars, diaries, and postcards.”
`
`Opposer has failed to cite a single registration owned by Opposer which
`
`contains anything remotely similar to any of these goods. Similarly, the Declaration of
`
`Lesley Skipp in support of Opposer’s Motion fails to mention or allege any common law
`
`
`
`usage of any goods even remotely similar to anything set forth in the International Class
`
`16 section of Applicant’s application.
`
`The closest the Opposer can even allege as to likelihood of confusion with
`
`regard to Applicant’s Class 16 goods appears a single time in a single line at Paragraph
`
`No. 80 appearing on page 30 of the Declaration of Lesley Skipp in which she alleges
`
`the following:” ...the Element brand has become and remains well known as a lifestyle
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`brand and recognized for its goods including Class 16 goods (e.g. stickers).”
`
`Stickers? What stickers? In all of the hundreds of pages of documents
`
`and arguments submitted by the Opposer, nowhere is there any allegation or proof of
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`any use of stickers by the Opposer. Nor is there any proof or allegation of any use of
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`the mark element or anything remotely similar thereto to any of the goods set forth in
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`International Class 16 of Applicant’s mark.
`
`Opposer’s documents and testimony tell us nothing about these alleged
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`stickers, how many have been sold, what theydo, how long they have been sold, and
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`whether any such usage inures to the benefit of the Opposer.
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`In any event, Applicant’s
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`International Class 16 Listing of Goods does not even include this amorphous
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`designation. Accordingly,
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`it will be seen that likelihood of confusion cannot exist with
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`regard to the goods set forth in International Class 16 of Applicant’s mark.
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`Indeed, if Summary Judgment is to fail with regard to one class of a multi-
`
`class application, then Summary Judgment should fail with regard to all classes set forth
`
`
`
`therein.
`
`It would appear to make little sense to bifurcate such issues since a trial would
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`in any event become necessary with regard to some other class, and the salutary
`
`effects of a Summary Judgment Motion, that is to avoid a trial, would in any event not
`
`succeed.
`
`“A review of Trademark Board summary judgment decisions
`has revealed that the Board is less likely to grant motions
`which do not totally dispose of a case...”
`
`- McCarthy on Trademarks and
`Unfair Competition Sec. 202132
`
`“ All reasonable inferences and doubts drawn from
`the record must be resolved against the moving
`party and in favor of the responding party”
`
`— Colgate-Palmolive Co. v. S.C. Johnson & Son, Inc.
`159 U.S.P.Q. 56 (T.T.A.B.)
`
`“ Summary judgment should be cautiously used
`so as not to deprive a party of the right to have the
`case decided on the evidence presented during the trial.”
`
`— United States Steel Corp. v. Vasco Metals
`Corp., 394 F.2d 1009, 157 U.S.P.Q 627
`
`In summary, Opposer has clearly failed to demonstrate any usage, either
`
`common law or through trademark registrations which in any way relate to the goods in
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`Applicants Class 16 Listing of Goods, and Summary Judgment clearly should be
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`denied.
`
`
`
`APPLlCANT'S CLASS 18 AND CLASS 25 L|ST|NG OF GOODS
`
`Applicant’s Trademark‘ Application as opposed herein contains goods in
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`International Class 18 such as walking sticks, whips, harnesses, Saddlery,
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`leather,
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`imitation leather sold in bulk and various items of clothing in International Class 25.
`
`Opposer has alleged prior usage of the mark Element for certain goods in
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`Classes 18 and 25.
`
`However, Opposer has not alleged any use of the dominant feature of
`
`Applicant’s mark ZU. As for the remaining part of Applicant’s mark, namely the word
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`element,
`
`it
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`is the position of the Applicant that a triable issue of fact relates to the
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`strength of this mark as applied to goods in International Classes 18 and 25;
`
`By way of example, Applicant attaches to this Memorandum as Exhibit A,
`
`a series of third party trademark registrations issued by the United States Patent and
`
`Trademark Office all consisting of Class 25 or Class 18 goods, and all of which include
`
`the word elements:
`
`Registration No. 2,753,219
`
`Elements by Arnold Zimberg
`
`Registration No. 2,988,792
`
`DS Elements
`
`Registration No. 3,144,204
`
`Elements Spa & Shop
`
`Registration No. 3,359,153
`
`Elements of Life
`
`Registration No. 2,385,797
`
`4 Elements
`
`
`
`Registration No. 2,174,608
`
`Elements of Style
`
`Registration No. 3,354,385
`
`Elements of Bliss
`
`Registration No. 2,751,429
`
`Elements REI
`
`Registration No. 3,463,408
`
`Elements All Weather Conditions
`
`Registration No, 1,725,880
`
`RE| Elements
`
`Registration No. 3,010,669
`
`Element Quattro
`
`Registration No. 3,019,056
`
`Clemente
`
`Registration No. 2,894,402
`
`Elements Liquid Action
`
`Registration No. 1,366,756
`
`Basic Elements
`
`Registration No. 1,457,558
`
`Basic Elements
`
`Registration No. 2,056,080
`
`Classic Elements
`
`’ Registration No. 1,552,036
`
`Active Elements
`
`Registration No. 2,843,874
`
`Beyond the Element
`
`Registration No. 2,850,274
`
`Protect your Elements
`
`Registration No. 1,761,466
`
`Prime Elements
`
`Registration No. 3,307,247
`
`Bad Element Street Machines
`
`Registration No. 2,667,051
`
`Mind Elements
`
`Registration No. 3,450,575
`
`Genuine Element
`
`Registration No. 3,276,491
`
`Outdoor Elements
`
`Registration No. 3,165,719
`
`Design Elements by Donna Degnan
`
`Registration No. 2,668,975
`
`Elemental Stretch
`
`Registration No. 2,031,210
`
`Bostonian Elements
`
`Registration No. 2,605,633
`
`Own Your Element
`
`
`
`Registration No. 2,807,733
`
`3"‘ Element
`
`I
`
`Registration No. 2,809,782
`
`Brave the Elements
`
`Registration No. 3,189,562
`
`United Element
`
`Registration No. 1,540,635
`
`Basic Options by Basic Elements
`
`Registration No. 2,919,619
`
`Grace Elements
`
`Registration No. 2,884,898
`
`Prime Elements
`
`Registration No. 2,532,260
`
`The Vertical Element
`
`Registration No. 2,553,724
`
`Leather Elements
`
`Registration No. 2,715,253
`
`Natural Elements by Diane Gilman
`
`Registration No. 2,737,412
`
`Trans Element
`
`Registration No. 2,736,717
`
`SALON Elements
`
`Registration No. 2,734,510
`
`Against the Elements
`
`Registration No. 3,009,483
`
`Element Barrier
`
`The following U.S. Trademark Registrations have expired, but
`
`nevertheless have a probative value, in that they demonstrate a history of presumed
`
`use and registration of the mark Element for articles of clothing and bags and luggage:
`
`Reg. No. 2,027,665
`
`Elements By Nina
`
`Reg. No. 1,533,209
`
`Elements by Jim Ellis
`
`Reg. No 1,766,771
`
`Elements By Evan-Picone
`
`Reg. No. 2,037612
`
`Elements by J.G. Hook
`
`Reg. No. 2,046,423
`
`Elements by J.G. Hook and design
`
`Reg. No. 1,681,264
`
`Elements by Moshay
`
`
`
`Reg.
`
`No
`
`. 1,891,553
`
`Reg.
`
`No.
`
`2,337,625
`
`Reg.
`
`No.
`
`2,276,965
`
`Reg.
`
`No.
`
`2,145,041
`
`Reg.
`
`No.
`
`2,192,586
`
`Reg.
`
`No.
`
`2,241,827
`
`Elements Exclusively Speigel
`
`Elements Mandee
`
`Extreme Elements
`
`Escada Elements
`
`Fashion Elements
`
`Career Elements
`
`Reg.
`
`No.
`
`2,282,772
`
`Top Elements
`
`Reg.
`
`No.
`
`1,597,594
`
`American Casual Elements
`
`Reg.
`
`No.
`
`2,317,265
`
`Baby Elements
`
`Reg.
`
`No.
`
`1,665,485
`
`Design Elements
`
`Reg.
`
`No.
`
`1,344,698
`
`Reg.
`
`No.
`
`1,990,704
`
`Reg.
`
`No.
`
`1,901,808
`
`Vital Elements
`
`Inter Elements
`
`Extra Elements
`
`Reg.
`
`No.
`
`1,979,376
`
`Earthly Elements
`
`Reg.
`
`No.
`
`1,682,487
`
`Preferred Elements
`
`Reg.
`
`No.
`
`1,727,800
`
`Preferred Elements
`
`Reg.
`
`No.
`
`1,693,151
`
`Changing Elements
`
`Reg.
`
`No.
`
`1,307,185
`
`Changing Elements
`
`Reg.
`
`No.
`
`2,447,263
`
`Accents & Elements
`
`Reg.
`
`No.
`
`2,046,137
`
`Earth Elements
`
`Reg.
`
`No.
`
`1,711,879
`
`Natural Elements
`
`Reg.
`
`No.
`
`2,058,401
`
`Lifestyle Elements by Sonia
`
`Reg.
`
`No.
`
`2,271,051
`
`Dana Buchman Elements
`
`
`
`Reg.
`
`No
`
`. 2,011,369
`
`Northern Elements
`
`Reg.
`
`No
`
`. 2,016,807
`
`Northern Elements
`
`Reg.
`
`No.
`
`1,991,831
`
`Creative Elements
`
`Reg.
`
`No.
`
`1,994,106
`
`All Element Conditioning
`
`Reg.
`
`No.
`
`1,812, 219
`
`ONE Observe Natural Elements
`
`Reg.
`
`No.
`
`1,776 776
`
`Local Elements
`
`Reg.
`
`No.
`
`1,808,521
`
`Vintage Elements
`
`Reg.
`
`No.
`
`1,849,358
`
`Essential Elements
`
`Reg.
`
`No.
`
`3,139,774
`
`Raw Elements
`
`Reg.
`
`No
`
`. 1,524,675
`
`Melbourne Elements
`
`Reg.
`
`No
`
`. 1,789,498
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`Elemental
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`Copies of these registrations are attached as part of Exhibit A.
`
`It is emphasized that all of the above trademark registrations relate to the
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`use of the word element or elements in International Class 25, and also in International
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`Class 18.
`
`Additionally, a Google search of use of the word element in connection
`
`with class 18 and class 25 goods reveals numerous uses of the mark apart from the
`
`above cited registrations. A sample of such usage is attached hereto as Exhibit B, the
`
`Declaration of Olga Fuchs:
`
`Classic Elements beaded tank
`
`Classic Elements short sleeve
`
`
`
`Classic Elements layered woven shirt
`
`Classic Elements print top all sold by Sears
`
`X-Element woman’s fashion clogs at Moto Sport
`
`Physical Element wearing apparel
`
`Women's Elements clothing
`
`Green Element clothing
`
`Element 47 clothing
`
`Element 88 wearing apparel
`
`Brooks Element Sprinter woman’s shorts
`
`5”‘ Element men’s shirts
`
`4”‘ Element wearing apparel
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`Element Zero Gilet
`
`ELEMENT Sleeveless Jersey
`
`Sprayway ELEMENT Windstopper
`
`Gore ELEMENT Top
`
`Sports ELEMENT
`
`Fourth ELEMENT Global Ocean T-Shirt
`
`REI Elements Mens Ski Pants
`
`Merrell Element Shoes
`
`TUMI Luggage ELEMENTS Collection
`
`Amaro Elements Wheel Backpack
`
`CalPk ELEMENT T-Pole Rolling Backpack
`
`10
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`
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`Applicant should have the right during its trial testimony period, to prove
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`not only the existence of a multitude of element third party trademark registrations within
`
`the Classes 18 and 25, but additionally and more importantly third party uses.
`
`Indeed, the word element is so often used as a trademark that inserting
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`the word element in the uspto.gov website search engine results in no less than 1,642
`
`hits.
`
`Where a trademark is so common, consumers are apt to look" towards the
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`entire trademark before making a determination as to its source or origin. Here, the
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`dominant feature of App|icant’s mark which appears about 5 times higher and bolder
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`than the word elements is the word ZU which is totally absent from Opposer’s mark.
`
`Summary Judgment is highly inappropriate with regard to Classes 25 and
`
`18, because Applicant should be given the opportunity during its trial testimony period to
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`demonstrate that there are so many third party trademark registrations and so many
`
`third party trademark usages of the trademark element with respect to Classes 25 and
`
`18 that no likelihood of confusion will exist.
`
`It appears clear from the plethora of third party registrations for the word
`
`element, and the third party uses for clothing and baggage for the mark element, that
`
`this is a crowded trademark market:
`
`“ But a mark that is hemmed in on all sides by similar
`
`11
`
`
`
`goods can not be very ‘distinctive’. It is merely one of
`a crowd of marks. In such a crowd, customers will
`not likely be confused between any two of the crowd and
`may have learned to carefully pick out one from the other”
`
`—McCarthy on Trademark and Unfair
`Competition Sec. 11:85 (citing authorities)
`
`Not only is the word element part of a crowded field in the area of class 18
`
`and class 25 goods, but the fact that the word generates over 1,600 hits in the
`
`uspto.gov search engine
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`indicates that it is a very common overall and therefore a very weak mark.
`
`This fact, compounded by the fact that in any event the dominant portion
`
`of Applicants mark is NOT the word element but the word ZU (which is not only the
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`dominant feature of applicant’s mark, but is also arbitrary and non-descriptive) would
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`appear to put the lid upon the issue of likelihood of confusion.
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`This is not the stuff of which motions for summary judgment are made.
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`A TRIABLE ISSUE OF FACTS EXISTS AS TO WHETHER ROCKET TRADEMARKS
`
`PTY LTD IS THE REAL PARTY IN INTEREST IN CONNECTION WITH THIS
`
`OPPOSITION PROCEEDINGS
`
`It is noted that all of the trademark registrations in this case are owned by
`
`Rocket Trademarks Pty Ltd.
`
`12
`
`
`
`However, there is not a scintilla of evidence in all of the documentation
`
`submitted by the Opposer which supports any use whatsoever with respect to use of the
`
`trademark by Rocket Trademarks Pty Ltd.
`
`On the other hand, the Declaration of Lesley Skipp, relied upon in support
`
`of the Motion for Summary Judgment, refers exclusively to use by a totally different
`
`entity by the name of Billabong.
`
`The Declaration of Lesley Skipp makes the legal and se|f—serving
`
`conclusion that Rocket Trademarks Pty Ltd is a wholly owned subsidiary of Billabong
`
`International Limited.
`
`However,
`
`this
`
`is
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`a
`
`legal
`
`conclusion which
`
`is
`
`unsupported
`
`by
`
`documentation. The Declaration further alleges that the core brands of Billabong
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`include the word element. Rocket Trademarks Pty Ltd is not mentioned.
`
`Attached hereto as Exhibit C is an Affidavit of David Gottlieb who testified
`
`that he visited an Element store in New York City and there was no evidence therein
`
`relating any of the goods in the store to Rocket Trademarks Pty Ltd. The Gottlieb
`
`Affidavit even indicates that the salesperson in the store had never heard of Rocket
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`Trademarks Pty Ltd.
`
`13
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`
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`This is not intended as a collateral attack upon the registerability of the
`
`marks by Rocket Trademarks Pty Ltd.
`
`However,
`
`it is intended to raise a legitimate issue as to whether the real
`
`party in interest is involved in this case.
`
`Evidently, Opposer cannot establish its connection as the real party in
`
`interest in this case through the self—serving Affidavits of interested and biased parties.
`
`Put another way, Opposer has failed to establish with clear and convincing evidence,
`
`that the Billabong and other related alleged Element use is controlled by Rocket
`
`Trademarks Pty Ltd., and inures to the benefit of Rocket Trademarks Pty Ltd.
`
`Applicant herein should have the right
`
`to raise this issue in its trial
`
`testimony period, as it is relevant to the ability of the Opposer to prevail in this case.
`
`OPPOSER HAS ACQUIESCED IN THE USE OF THE MARK ELEMENT UPON
`SIMILAR GOODS BY OTHER THIRD PARTIES
`
`At Paragraph No. 23 of Opposer’s Motion for Summary Judgment,
`
`Opposer alleges that it has repeatedly policed its rights against third parties and has
`
`successfully opposed a series of trademark applications.
`
`14
`
`
`
`To the extent
`
`that
`
`the statement,
`
`infers that successful Notices of
`
`Opposition were filed, the allegation is incorrect.
`
`In fact, to the knowledge of Applicant, Opposer has never successfully
`
`won a single solitary opposition proceeding against a third party user of the mark
`
`element or any similar mark. Additionally, to the knowledge of the applicant Notices of
`
`Opposition were never filed against all of the applications set forth in Opposer’s Motion
`
`for Summary Judgment.
`
`On the contrary in fact, Opposer has acquiesced in the registration of all of
`
`the trademark registrations including the word element, all of which are for clothing or
`
`bags and the like which are set forth above in this Brief.
`
`Opposer is further apparently acquiescing voluntarily in third party uses of
`
`the mark element for articles of clothing and baggage as set forth in the Olga Fuchs
`
`declaration.
`
`SUMMARY
`
`In summary, Opposer has failed to allege any similarity of goods or any
`
`likelihood of confusion with regard to App|icant’s Class 16 Listing of Goods. The best
`
`that the Opposer can somehow muster as to a similarity in goods is an oblique and
`
`unexplained reference to “stickers”. Accordingly, it would appear abundantly clear that
`
`no Summary Judgment should be granted with regard to Class 16 basically because of
`
`15
`
`
`
`the vast differences of the goods involved.
`
`If Summary Judgment is denied with regard
`
`to International Class 16,
`
`it should similarly be denied with respect to the remaining
`
`classes. This is because the salutary affect of Summary Judgment in removing the
`
`necessity of a trial would not exist if only partial Summary Judgment would be granted.
`
`In any event, Summary Judgment should not be granted with regard to
`
`Classes 18 and 25 because of the fact that the dominant feature of Applicant’s mark is
`
`the word ZU which is an arbitrary non-descriptive designation totally missing in any of
`
`Opposer‘s registrations or usages. Under these circumstances the single linkage of the
`
`word element is totally insufficient to establish likelihood of confusion, particularly in
`
`view of the vast amount of third party registrations for identical goods in International
`
`Classes 25 and 18, as well as apparent third party uses.
`
`Applicant should be given the right to prove through trial testimony the
`
`thirdparty uses and not only those attached hereto, but additional third party uses which
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`may be established during its trial testimony.
`
`Finally, there is an open question as to whether Rocket Trademarks Pty
`
`Ltd is the real party in interest in this Opposition proceeding. The Declaration of Lesley
`
`Skipp which basically asserts that usage of the mark is taking place by another
`
`company, and the Declaration of David Gottlieb which indicates that a complete lack of
`
`connection between Rocket Trademarks Pty Ltd and use of the mark element would
`
`appear to clearly shift the burden of proof with regard to the issue of a real party in
`
`16
`
`
`
`interest back to the Opposer. Summary Judgment is highly inappropriate under these
`
`circumstances.
`
`In view of all of the above, the Motion for Summary Judgment should be
`
`denied in all respects.
`
`Respectfully sumitted,
`
`
`
` . Striker
`
`Attorney for Opposer
`Reg. No.: 27233
`103 East Neck Road
`Huntington, New York 11743
`
`17
`
`
`
`CERTIFICATE OF SERVICE
`
`It is hereby certified that a true and complete copy of the foregoing
`MEMORANDUM IN OPPOSITION TO MOTION FOR SUMMARY JUDGMENT
`was served upon counsel for the Opposer via first class mail this 28”‘ day of
`August, 2008 at the following address:
`
`Nixon & Vanderhye, P.C.
`901 n. Glebe Road, Suite 1100
`Arlington, Virginia, 22203
`
`Attn: Duane M. Byers
`
`
`
`Dated: §’l),.:/fig
`
`
`
`EXHIBIT A
`
`List of element registrations
`
`
`
`% Int. CL: 25
`
`Prior US. 05.: 22 and 39
`
`Reg. No. 2,753,219
`United States Patent and Trademark Office Registered Aug. 19, 2003
`
`
`
`TRADEMARK
`PRINCIPAL REGISTER
`
`ELEMENTS BY ARNOLD ZEVIBERG
`
`ZIMBERG, ARNOLD (UNITED STATES INDIVI-
`DUAL)
`4 WEST 22ND STREET, IOTH FLOOR
`NEW YORK, NY 10010
`
`FOR: CLOTHING FOR MEN AND WOMEN,
`NAMELY, SHIRTS, TOPS, SLACKS, PANTS, SUITS,
`SWEATERS, JACKETS, COATS, SKIRTS, SHORTS,
`
`DRESSES, HATS, BELTS, SOCKS, SCARVES,
`GLOVES, IN CLASS 25 (US. CLS. 22 AND 39).
`
`FIRST USE $152002; IN COMMERCE 6-15-2002.
`
`SER. NO. 78-174,004, FILED 10-l4—2002.
`
`RON FAIRBANKS, EXAMINING ATTORNEY
`
`
`
`Int. CL: 25
`
`Prior U.S. Cls.: 22 and 39
`
`Reg. No. 2,988,792
`United States Patent and Trademark Office
`Registered Aug. 30, 2005
`
`TRADEMARK
`
`PRINCIPAL REGISTER
`
`
`
`D.E.S. STUDIO INC. (CANADA CORPORATION)
`433 CHABANEL STREET WEST
`SUITE 903
`MONTREAL, QUEBEC, CANADA H2N 2J9
`
`AND FOOTWEAR, TOGETHER WITH ALL ACCES-
`SORIES, NAMELY, BELTS, SOCKS, TIES, CAPS AND
`HATS, IN CLASS 25 (US. CLS. 22 AND 39).
`
`FOR: ALL MEN’S, WOMEN’S, BOYS’, GIRLS’
`AND CHILDREN’S WEARING APPAREL NAMELY,
`SHIRTS, PANTS, BLAZERS, JACKETS, VESTS,
`SKIRTS, SHORTS, JEANS, SWEATERS, T-SHIRTS,
`UNDERCDOTHING, UNDERGARMENTS, UNDER-
`WEAR, LINGERIE, BRASSIERES, PANTIES, HOSI-
`ERY, PANTYHOSE, CAMISOLES, SLEEPWEAR,
`
`FIRST USE 4-0-2004; IN COMMERCE 4-0-2004.
`
`OWNER OF U.S. REG. NO. 2,609,835.
`
`SER. NO. 76-600,757, FILED 7-6-2004.
`
`AMY GEARIN, EXAMINING ATTORNEY
`
`
`
`Int. Cls.: 25 and 44
`
`Prior U.S. Cls.: 22, 39, 100 and 101
`
`Reg. No. 3,144,204
`United States Patent and Trademark Office
`Registered Sep. 19, 2006
`
`TRADEMARK
`
`SERVICE MARK
`
`PRINCIPAL REGISTER
`
`
`
`AQUA MOON INTERNATIONAL, L.L.C. (NORTH
`CAROLINA LTD LIAB CO)
`SUITE 101
`210 EAST MAIN STREET
`
`BREVARD, NC 28712
`
`FOR: T-SHIRTS, ROBES, HATS, IN CLASS 25 (US.
`CLS. 22 AND 39).
`
`FIRST USE 12-0-2003; IN COMMERCE 3-0-2004.
`
`FOR: HEALTH SPA SERVICES, NAMELY, COS-
`METIC BODY CARE SERVICES IN THE NATURE
`OF AROMATHERAPY, FACIALS, MASSAGE, BODY
`WRAPS, BODY POLISH, MANICURES AND PEDI-
`CURES, WELLNESS AND STRESS THERAPIES,
`AND GENERAL HEALTH AND WELLNESS CON-
`SULTATION, IN CLASS 44 (US. CLS. 100 AND 101).
`
`FIRST USE 12-0-2003; IN COMMERCE 3-0-2004.
`
`NO CLAIM IS MADE TO THE EXCLUSIVE
`RIGHT TO USE "SPA AND SHOP", APART FROM
`THE MARK AS SHOWN.
`
`THE COLOR(S) GRAY, DARK GRAY, AND
`WHITE IS/ARE CLAIMED AS A FEATURE OF
`THE MARK.
`
`THE COLOR GRAY APPEARS IN THE BACK-
`GROUND BLOCK AND THE WORD "SPA AND
`SHOP" BENEATH IT. THE COLOR DARK GRAY
`APPEARS IN THE WORD "ELEMENTS" SUPER-
`IMPOSED ON THE BLOCK. THE COLOR WHITE
`APPEARS IN ASTROLOGICAL SYMBOLS FOR THE
`FOUR ELEMENTS CONTAINED WITHIN THE
`BLOCK. THE SYMBOLS IN THE BLOCK ARE,
`BEGINNING WITH THE TOP LEFT: FIRE, TOP
`RIGHT: EARTH, BOTTOM LEFT: AIR, BOTTOM
`RIGHT: WATER.
`
`THE MARK CONSISTS OF THE WORD ELE-
`MENTS WRITTEN IN LOWERCASE SCRIPT
`ACROSS A BACKGROUND WHICH IS A BLOCK
`CONTAINING ASTROLOGICAL SYMBOLS FOR
`THE FOUR ELEMENTS. THE SYMBOLS IN THE
`BLOCK ARE, BEGINNING VVITH THE TOP LEFT:
`FIRE, TOP RIGHT: EARTH, BOTTOM LEFT: AIR,
`BOTTOM RIGHT: WATER. SPA AND SHOP IS
`WRITTEN UNDERNEATH THE WORD ELEMENTS
`AND THE BLOCK WHICH CONTAINS THE SYM-
`BOLS.
`
`SER. NO. 78-406,546, FILED 4-22-2004.
`
`ALLISON HOLTZ, EXAMINING ATTORNEY
`
`
`
`Int. C]s.: 9, 25 and 41
`
`Prior U.S. Cls.: 21, 22, 23, 26, 36, 38, 39, 100, 101 and
`107
`
`Reg. No. 3,359,143
`United States Patent and Trademark Office
`Registered Dec. 25, 2007
`
`TRADEMARK
`
`SERVICE MARK
`
`PRINCIPAL REGISTER
`
`VEGA RECORDS,
`PORATION)
`513 36TH ST.
`UNION CITY, NJ 07087
`
`INC.
`
`(NEW JERSEY COR-
`
`FOR: SOUND RECORDINGS, NAMELY, PRE-
`RECORDED PHONOGRAPH RECORDS, AUDIO
`TAPES, COMPACT DISCS, MINI DISCS, DIGITAL
`DOWNLOAD FILES, VIDEO TAPES, OPTICAL
`DISCS, DIGITAL VIDEO DISCS, AND MOTION
`PICTURE FILMS FEATURING MUSIC AND EN-
`TERTAINMENT, IN CLASS 9 (US. CLS. 21, 23, 26, 35
`AND 33).
`
`FIRST USE 5-31-2000; IN COMMERCE 5-31-2000.
`
`FOR: CLOTHING FOR MEN, WOMEN AND
`CHILDREN, NAMELY, SHIRTS, JACKETS, SWEA-
`TERS, PANTS, FOOTWEAR, BELTS, PAJAMAS, T-
`SHIRTS, SOCKS, SKIRTS, SLACKS, TENNIS SHOES,
`SWEAT SHIRTS, JERSEYS, SHORTS, JOGGING
`SUITS, SWEAT PANTS, HATS, CAPS, SCARVES,
`
`GLOVES, HOSIERY, NECKTIES, RAINWEAR, PA-
`JAMAS, ROBES, UNDERWEAR, HEADBANDS,
`WRISTBANDS, BANDANAS, BLOUSES, PANTIES
`AND LINGERIE, IN CLASS 25 (US. CLS. 22 AND 39).
`
`FIRST USE 5-31-2000; IN COMMERCE 5-31-2000.
`
`FOR: ENTERTAINMENT SERVICES, NAMELY,
`LIVE PERFORMANCES BY A MUSICAL GROUP, IN
`CLASS 41 (US CLS. 100, 101 AND 107).
`
`FIRST USE 3-1-2003; IN COMMERCE 3-1-2003.
`
`THE MARK CONSISTS OF STANDARD CHAR-
`ACTERS WITHOUT CLAIM TO ANY PARTICULAR
`FONT, STYLE, SIZE, OR COLOR.
`
`SER. NO. 77-153,994, FILED 4-11-2007.
`
`KAREN BRACEY, EXAMINING ATTORNEY
`
`
`
`Int. Cl.: 25
`
`Reg. No. 2,385,797
`Prior U.S. Cls.: 22 and 39
`
`United States Patent and Trademark Office Registered Sep. 12, 2000
`
`TRADEMARK
`PRINCIPAL REGISTER
`
`4 ELEMENTS
`
`(CALIFORNIA COR-
`INC.
`OLAES ENTERPRISES,
`POR_A_T10N),DBA ODM AND 4 ELEMENTS
`13350 STOWE DRIVE
`POWAY, CA 92064
`
`FOR: CLOTHING APPAREL; NAMELY, T-SHIRTS,
`CAPS AND HATS, IN CLASS 25 (U.S. CLS. 22 AND
`39).
`
`FIRST USE 9-10-1999; IN COMMERCE 9-10-1999.
`
`SER. NO. 75-354,553, FILED 12-6-1999.
`
`DOUGLAS LEE, EXAMINING ATTORNEY
`
`
`
`Int. Cl.: 25
`
`Prior U.S. Cls.: 22 and 39
`
`Reg. No. 2,174,608
`Registered July 21, 1998
`United States Patent and Trademark Office
`
`TRADEMARK
`PRINCIPAL REGISTER
`
`ELEMENTS OF STYLE
`
`ELEMENTS OF STYLE NYC, INC. (NEW YORK
`CORPORATION)
`141 W 28TH STREET
`NEW YORK, NY 10001
`
`T-SHIRTS,
`FOR: CLOTHING, NAMELY,
`PANTS,
`SWEATSHIRTS.
`HATS,
`BELTS,
`SHORTS,
`JACKETS,
`SOCKS,
`I-IEADBANDS
`
`AND NECKGATORS, IN CLASS 25 (U.S. CLS. 22
`AND 39).
`FIRST USE
`443-1993.
`
`IN COMMERCE
`
`11-0-1992;
`
`SER. NO. 75—258,682, FILED 3-l7~l997.
`
`JAMES L. VANA, EXAMINING ATTORNEY
`
`
`
`Int. Cl.: 25
`
`Prior U.S. C1s.: 22 and 39
`
`Reg. No. 3,354,385
`United States Patent and Trademark Office Registered Dec. 11, 2007
`
`
`
`TRADEMARK
`PRINCIPAL REGISTER
`
`WARNA)CO U.S-, INC. (DELAWARE CORPORA-
`TION
`470 WHEELERS FARMS ROAD
`MILFORD’ CT 06460
`
`FOR‘ INTIMATE APPAREL AND FIGURE EN-
`
`FIRST USE 1-31-2007; IN COMMERCE 1—3m2o7.
`
`THE MARK CONSISTS OF STANDARD CHAR-
`ACTERS WITHOUT CLAHVI TO ANY PARTICULAR
`FONT’ STYLE’ SIZE’ OR COLOR
`
`LINGERIE, FOUNDATION GARMENTS, CA.I\’II-
`SOLES’ IN CLASS 25 (U_S_ CLS_ 22 AND 39)_
`
`WENDY GOODMAN, EXAMINING ATTORNEY
`
`
`
`Int. CL: 25
`
`Prior U.S. C1s.: 22 and 39
`
`Reg. No. 2,751,429
`United States "Patent and Trademark Office
`Registered Aug. 12, 2003
`
`TRADEMARK
`PRINCIPAL REGISTER
`
`
`
`ELEMENTS
`
`RECREATIONAL EQUIPMENT,
`SHINGTON CORPORATION)
`P.O. BOX 1938
`SUMNER, WA 983900800
`
`INC.
`
`(WA-
`
`FIRST USE 9-10-2002; IN COMMERCE 9-10-2002.
`
`- OWNER OF US. REG. NOS. 1,163,815, 1,725,880,
`AND OTHERS.
`
`FOR: FABRIC SOLD AS A COMPONENT OF
`CLOTHING; CLOTHING, NAMELY, RAINCOATS,
`JACKETS, INFANT SUITS, PANTS, GLOVES, MIT-
`TENS, GAITERS, FOOTWEAR AND HEADWEAR,
`IN CLASS 25 (U.S. CLS. 22 AND 39).
`
`SN 78-115,698, FILED 3-18-2002.
`
`MICHAEL WEBSTER, EXAMINING ATTORNEY
`
`
`
`Int. C1.: 25
`
`Prior U.S. C1s.: 22 and 39
`
`Reg. No. 3,463,408
`United States Patent and Trademark Office Registered July 8, zoos
`
`
`
`TRADEMARK
`PRINCIPAL REGISTER
`
`CONDITION
`
`ERMENEGILDO ZEGNA CORPORATION (NEW
`YORK CORPORATION)
`UNIT A
`100 WEST FOREST AVENUE
`
`ENGLEWOOD, NJ 07631
`
`THE MARK coNs1sTs 01: STANDARD CHAR.
`ACTERS WITHOUT CLAIM TO ANY PARTICULAR
`FONT, STYLE, SIZE, OR COLOR.
`
`NO CLAIM IS MADE TO THE EXCLUSIVE
`RIGHT TO USE "ALL WEATHER CONDITIONS",
`APART FROM THE MARK AS SHOWN.
`
`FOR: CLOTHING, NAMELY, COATS, IN CLASS
`25 (US. CLS. 22 AND 39).
`
`SN 77—124,202, FILED 3-7-2007.
`
`FIRST USE 6-0-2007; IN COMMERCE 6-0-2007.
`
`ANDREW RHM EXAMINING ATTORNEY
`
`
`
`Int. Cl.: 25
`
`Prior U.S. Cl.: 42
`
`Reg. No. 1,725,880
`_
`_
`Unlted States Patent and Trademark Office Registered 0ct.20,1992
`_____.__________.___.__.___.___..___...____.___..___.__.
`
`TRADEMARK
`PRINCIPAL REGISTER
`
`REI ELEMENTS
`
`RECREATIONAL EQUIPMENT, 1NC.
`INGTON CORPORATION)
`1’. 0. BOX 88126
`SF./\T'1‘1.F.. WA 98138()I2(w
`
`(WASH-
`
`2-1-1992;
`
`FERST USE
`2-1-1992.
`OWNER OF U.S. REG. NOS. 1,163,815, 1,276,551
`AND ()T11F.RS.
`
`IN
`
`COMMERCE
`
`FOR: FABRICS SOLD AS A COMPONENT OF
`CLOTHING, IN CLASS 25 (US. CL. 42).
`
`SER. NO. 74~250,789. FILED 2~28—1992.
`
`PAUL KRUSE. EXAMINING ATTORNEY
`
`
`
`Int. Cl.: 25
`
`Prior U.S. Cls.: 22 and 39
`
`Reg. No. 3,010,669
`United States Patent and Trademark Office Registered Nov. 1, 2005
`
`
`
`TRADEMARK
`
`PRINCIPAL REGISTER
`
` e1emenuQu;w-,r
`
`TIANGCO, CARLOS B. (UNITED STATES INDI-
`VIDUAL)
`1810 E. NANETTE AVE.
`
`THE MARK CONSISTS OF STYLIZED LETTERS
`EQ INSIDE SQUARE WITH FOUR CIRCLES/DOTS.
`
`THE ENGLISH TRANSLATION OF THE ITALIAN
`
`FOR: SHIRTS, IN CLASS 25 (U8. CLS. 22 AND 39).
`
`SER. NO. 78-371,058, FILED 2-20-2004.
`
`FIRST USE 12-1-2003; IN COMMERCE 12-9-2003.
`
`WON TEAK OH, EXAMINING ATTORNEY
`
`
`
`Int. C1s.: 3 and 25
`
`Prior U.S. C1s.: 1, 4, 6, 22, 39, 50, 51 and 52
`
`United States Patent and Trademark Office
`
`Reg. No. 3,019,056
`Registered Nov. 29, 2005
`
`TRADEMARK
`
`PRINCIPAL REGISTER
`
`eiemenre
`
`cLemenTe
`
`DOUBLE..D TEXTIL GMBH (FED REP GERMA-
`NY CORPORATION)
`OSTERWALDSTRASSE 10
`
`MUNICH, FED REP GERMANY D-80805
`
`FOR: PERFUMERY AND COSMETICS, IN CLASS
`3 (U.S. CLS. 1, 4, 6, 50, 51 AND 52).
`
`FOR: CLOTHING, NAMELY COATS, INDOOR
`AND OUTDOOR JACKETS, SUITS, TROUSERS,
`SHIRTS, BLOUSES, SKIRTS, DRESSES, VESTS,
`TOPS, SWEATERS, SHAWLS, AND SCARVES;
`HEADGEAR, NAMELY HATS; AND FOOTWEAR.,
`IN CLASS 25 (US. CLS. 22 AND 39).
`
`OWNER OF FED REP GERMANY REG. NO.
`30244366, DATED 12-2-2002, EXPIRES 9-30-2012.
`
`THE MARK CONSISTS OF A STYLIZED VER-
`SION OF ELEMENTE ABOVE A STYLIZED VER-
`SION OF CLEMENTE, WITH A HORIZONTAL LINE
`TI-IE LENGTH OF CLEMENTE SEPARATING THE
`TWO WORDS.
`
`THE ENGLISH TRANSLATION OF THE WORD
`ELEMENTE IN THE MARK IS ELEMENTS.
`
`SER. NO. 76-554,873, FILED 10-6-2003.
`
`LINDA MICKLEBURGH, EXAMINING ATTORNEY
`
`
`
`Int. Cls.: 25 and 32
`
`Prior U.S. Cls.: 22, 39, 45, 46 and 48
`
`' Reg. No. 2,394,402
`
`United States Patent and Trademark Office
`Regtered Oct. 19, 2004
`
`TRADEMARK
`PRINCIPAL REGISTER
`
` S
`elac:
`
`L1!
`
`'
`
`' iicfiori
`
`SNAPPLE BEVERAGE CORP. (DELAWARE COR-
`PORATION)
`709 WESTCI-IESTER AVENUE, SUITE 410 _
`WHITE PLAINS, NY 10604
`
`FOR: FRUIT JUICES AND FRUIT FLAVORED
`SOFT DRINKS, IN CLASS 32 (U.S. CLS. 45, 46 AND
`48).
`
`FIRST USE 7-I-2002; IN COMMERCE 7-1-2002.
`
`FOR: HATS, FLEECE PULLOVERS, POLO
`SHIRTS: T-SHIRTS, JACKETS, IN CLASS 25 (US.
`CLS. 22 AND 39).
`
`OWNER OF U.S. REG. NOS. 2,363,312 AND
`2,386,498.
`
`SER, NO. 76-498,272, FILED 3-l7—2003.
`
`FIRST USE 7-1-2002; IN COMMERCE 7-1-2002.
`
`CYNTHIA SLOAN, EXAMINING ATTORNEY
`
`
`
`Registered Oct. 22, 1985
`
`Reg. No. 1,366,756
`
`.
`
`w {'.’EPERR1ER, INC. (CALIFORNIA COR;-“G
`§
`_
`RATION)
`_-
`- 823"SOUTHMA'1[‘EO STREET
`--_ YLOSANGELES, CA 90021
`_
`‘
`.
`%
`"FOR: MEN’S SHIRTS AND PANTS, IN CLASS
`' w ;_-25‘ (U.S. CL. 39).
`
`_
`
`L
`
`IN COMMERCE
`10-1-1932;
`FIRST USE
`10-1-1982.
`SER. NO. 416,480, FILED 3-9-1933.
`LUCY A. MARINO, HEXAMINING ATTORNEY
`
`
`
`Int. Cl;:'25
`%
` P1-iohr U.S.__‘(_3l‘.:_: 39 7 ‘A
`_ Reg.No.’1,457,558.
`E
`.
`=
`“
`_
`E
`E
`.Un1ted-~St_ate_s Patent and .'l‘.rade=mark Off_1ce. RegistéredSep.15,1987
`
`
`-«
`
`
`3
`
`TRADEMARK-
`_
`.
`'_ :« 3 PRINCIPAL‘ REGISTER.
`
`BASIC ELEMENTS
`
`’ PERRIER, INC." (CALIFORNIA CORPOP.A.TlON~)
`55 EAST WASHINGTON-"BOULEVARD ~
`‘MONTEBELLO, CA 90640
`
`~
`
`.'FIRST USE 11-12.-1935;
`-
`3-14.-1986.
`_
`OWNER OF U.S. REG. NO. ,1,366,756.
`
`IN -COMMERCE.
`
`-
`.
`,
`FOR: SHIRTS,- T-SHIRTS, PANTS, JACKETS
`AND SHORTS, IN CLASS 25‘ (U.S._ CL. 39).
`
`SER. NO. 637,974, FILED‘-12-31-1936,.
`-
`' DEBORAH S. COI-I‘1A\1_, EXAMINING ATT-ORNEY
`
`
`1
`157/
`MM§/!W/
`
`
`
`Int. CL: 25
`
`Prior U.S. CIs.: 22 and 39
`
`Reg. No. 2,056,080
`Registered Apr. 22, 1997
`United States Patent and Trademark Office
`
`TRADEMARK
`PRINCIPAL REGISTER
`
`CLASSIC ELEMENTS
`
`SEARS, ROEBUCK AND CO.
`CORPORATION)
`3333 BEVERLY ROAD
`HOFFMAN ESTATES, IL 60179
`
`(NEW YORK
`
`4-1-1996;
`
`FIRST USE
`4-1-1996.
`NO CLAIM IS MADE TO THE EXCLUSIVE
`RIGHT TO USE “CLASSIC”, APART FROM
`THE MARK AS SHOWN.
`
`IN COMMERCE
`
`FOR: CLOTHING, NAMELY TOPS, SHIRTS,
`BLOUSES, VESTS, SHORTS, PANTS, SKIRTS,
`JACKETS AND SWEATERS, IN CLASS 25 (U.S.
`CLS. 22 AND 39).
`
`SN 74—678,376, FILED 5-24-1995.
`
`JOHN MICHOS, EXAMINING ATTORNEY
`
`
`
`
`
`0'1-‘ALLON. M0 63366. ASSIGNEE OF
`MAY DEPARTMENT STORES COM-
`PANY. THE (NEW YORK CORPORA-
`TION) ST. LOUIS, MO
`FOR: WOMEN'S TOPS, PANTS AND
`JACKETS, IN CLASS 25 (US. CL. 39}.
`’
`
`In testimony whereof I have