Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA114826
`ESTTA Tracking number:
`12/15/2006
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`Notice of Opposition
`
`Notice is hereby given that the following party opposes registration of the indicated application.
`Opposer Information
`
`Name
`Entity
`Address
`
`Stussy, Inc.
`Corporation
`17426 Daimler Street
`Irvine, CA 92614
`UNITED STATES
`
`Citizenship
`
`California
`
`Attorney
`information
`
`John R. Sommer
`John R. Sommer, Attorney-at-Law
`17426 Daimler Street
`Irvine, CA 92614
`UNITED STATES
`sommer@stussy.com Phone:949 752 5344
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`International
`Registration No.
`Applicant
`
`76242441
`12/15/2006
`
`NONE
`
`Publication date
`Opposition
`Period Ends
`International
`Registration Date
`
`11/28/2006
`12/28/2006
`
`NONE
`
`SHIN, KYU HO
`164-9, Samjeon-dong
`Songpa-ku, Seoul,
`KOREA, REPUBLIC OF
`Goods/Services Affected by Opposition
`
`Class 018.
`All goods and sevices in the class are opposed, namely: leather goods, trunks, bags and umbrellas,
`namely, portable cosmetic cases not filled with any contents; fur skin, namely, fur pelts; artificial fur
`skin, namely imitation fur pelts, non-precious materials purses, student's bags in the nature of
`backpacks, beach parasols, parasols, sticks for mountain-climbing, leather straps, namely, hand and
`shoulder carrying straps
`Class 025.
`All goods and sevices in the class are opposed, namely: clothing, shoes and hats, namely, low
`shoes, sports anorak, horse riding pants, men's suits, jeogori, namely Korean jackets, sweater, hats,
`leather belts
`
`Attachments
`
`Opposition.PDF ( 6 pages )(241863 bytes )
`
`Signature
`Name
`
`/John R. Sommer/
`John R. Sommer
`
`
`ESTTA114826
`ESTTA Tracking number:
`12/15/2006
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`Notice of Opposition
`
`Notice is hereby given that the following party opposes registration of the indicated application.
`Opposer Information
`
`Name
`Entity
`Address
`
`Stussy, Inc.
`Corporation
`17426 Daimler Street
`Irvine, CA 92614
`UNITED STATES
`
`Citizenship
`
`California
`
`Attorney
`information
`
`John R. Sommer
`John R. Sommer, Attorney-at-Law
`17426 Daimler Street
`Irvine, CA 92614
`UNITED STATES
`sommer@stussy.com Phone:949 752 5344
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`International
`Registration No.
`Applicant
`
`76242441
`12/15/2006
`
`NONE
`
`Publication date
`Opposition
`Period Ends
`International
`Registration Date
`
`11/28/2006
`12/28/2006
`
`NONE
`
`SHIN, KYU HO
`164-9, Samjeon-dong
`Songpa-ku, Seoul,
`KOREA, REPUBLIC OF
`Goods/Services Affected by Opposition
`
`Class 018.
`All goods and sevices in the class are opposed, namely: leather goods, trunks, bags and umbrellas,
`namely, portable cosmetic cases not filled with any contents; fur skin, namely, fur pelts; artificial fur
`skin, namely imitation fur pelts, non-precious materials purses, student's bags in the nature of
`backpacks, beach parasols, parasols, sticks for mountain-climbing, leather straps, namely, hand and
`shoulder carrying straps
`Class 025.
`All goods and sevices in the class are opposed, namely: clothing, shoes and hats, namely, low
`shoes, sports anorak, horse riding pants, men's suits, jeogori, namely Korean jackets, sweater, hats,
`leather belts
`
`Attachments
`
`Opposition.PDF ( 6 pages )(241863 bytes )
`
`Signature
`Name
`
`/John R. Sommer/
`John R. Sommer
`
`
`
`Date
`
`12/15/2006
`12/15/zoos
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`1n the matter of Application Serial No. 76/242,441
`Published for Opposition in the OFFICIAL GAZETTE of November 28, 2006
`
`STUSSY, lNC.,
`Opposer,
`
`V.
`
`KYU HO SHIN,
`Applicant.
`
`:
`:
`
`Opposition No.:
`
`NOTICE OF OPPOSITION
`
`Stussy, Inc. (“Opposer”), a California corporation having its principal place of business at
`
`17426 Daimler Street, Irvine, California 92614, believes it will be damaged by registration of the
`
`device mark SS shown in Serial No. 76/242,441 in International Class 18 and 25, filed by Kyu
`
`Ho Shin (“Applicant”), and hereby opposes the same.
`
`As grounds for this Opposition, it is alleged:
`
`1.
`
`On or about April 18, 2001, Applicant filed an intent to use application with the
`
`United States Patent and Trademark Office to register the SS device mark (consisting of two
`
`back—to—bacl< letter “S”s)(hereinafter “Applicant’s Mark”) for “leather goods, trunks, bags and
`
`umbrellas, namely, portable cosmetic cases not filled with any contents; fur skin, namely, fur
`
`pelts; artificial fur skin, namely imitation fur pelts, non—precious materials purses, student's bags
`
`in the nature of backpacks, beach parasols, parasols, sticks for rnountain—clirr1bing, leather straps,
`
`namely, hand and shoulder carrying straps” in International Class 18 and for “clothing, shoes and
`
`hats, namely, low shoes, sports anorak, horse riding pants, men's suits, jeogori, namely Korean
`
`jackets, sweater, hats, leather belts” in International Class 25.
`
`
`
`2.
`
`Previously Applicant filed its Application Serial Number 76/2425 56 for “covers
`
`of textile for furniture and household items, namely, covers for laundry machines, curtains of
`
`textile or plastic (except for shower curtains), television covers, piano covers, quilts, mattress
`
`covers, covers, bed blankets, bed covers, cushion covers; handkerchiefs of textile, towels of
`
`textile; silk fabric, cotton fabric, woolen cloth, artificial sweat fabric, embroidery fabric,
`
`synthetic fiber fabric, mixed hempen fabric, chemical fiber union cloth” in International Class
`
`24; and for “Shoe accessories, namely, shoe hooks, shoe buckles, shoe ornaments (not of
`
`precious metal), laces (except for embroidered laces); hair ribbons, hair pins, barrettes; belt
`
`ornaments, namely, pins, spangles; buckles and brooches for clothing; ornamental ribbons, hair
`
`grips and hair bands; buttons, hooks and snaps for clothing” in International Class 26. Opposer
`
`filed an Opposition against such Application and such Application was abandoned thereafter.
`
`2.
`
`Since at least as early as October 18, 1989, Opposer has been using the SS Link
`
`Mark (consisting of two back—to—back and interlocking letter “S”s) (hereinafter “SS Link Mark”)
`
`on a variety of goods and services as listed on the registrations listed below, among others goods
`
`and services:
`
`Class
`
`Reg. No.
`
`Reg. Date
`
`Goods
`
`artial list
`
`06
`09
`14
`16
`18
`19
`20
`22
`24
`25
`26
`28
`
`2,426,975
`2,399,916
`2,515,116
`2,450,863
`2,343,524
`California 105461
`2,444,295
`California 105 994
`2,590,655
`2,225,736
`2,450,864
`2,426,974
`
`02/06/01
`10/31/00
`12/04/01
`05/ 15/01
`04/18/00
`08/27/99
`04/17/01
`02/02/00
`07/09/02
`02/23/99
`05/15/01
`02/06/01
`
`Metal products
`Sunglasses, CDs
`Jewelry
`Printed matter, stickers, etc.
`Bags, luggage, etc.
`Foam and plastic signs
`Signs
`Bags for storage
`Labels
`Clothing, headwear
`Belt buckles
`Toys
`
`
`
`3.
`
`Specifically, Opposer is the owner of U.S. Registration No. 2,176,426 in
`
`International Class 18 and Reg. No. 2,225,736 in International Class 25, both for the SS Link
`
`Device. Both Registrations are incontestable within the meaning of Section 15.
`
`4.
`
`There is no issue as to priority. Applicant’s priority date for his intent—to—use
`
`application is the filing date, April 18, 2001. Opposer’s priority dates for the registrations are:
`
`Class 18:
`
`first use: September 1, 1992 and filed June 16, 1999; Class 25: first use January 1,
`
`1992 and filed January 6, 1998. Since long prior to Applicant’s filing of the application for
`
`Applicant’s Mark (no use of Applicant’s Mark having been alleged by Applicant), Opposer has
`
`made substantial and continuous use of the SS Link Mark in interstate, foreign, and intrastate
`
`comrnerce on and in connection with the advertising, promotion, and sale of its goods, since as
`
`early as 1992.
`
`5.
`
`By virtue of the aforesaid advertising, promotion, and sales, and by virtue of the
`
`excellence of its products, Opposer’s SS Link Mark has come to represent exceedingly valuable
`
`goodwill owned by Opposer.
`
`6.
`
`The goods on which Opposer uses its SS Link Mark and the goods for which
`
`Applicant seeks to register Applicant’s Mark are closely related, if not identical, and are sold
`
`through the same channels of trade and to the same class of purchasers.
`
`7.
`
`Opposer’s SS Link Mark and Applicant’s Mark are confusingly and substantially
`
`Similar.
`
`8.
`
`Use by Applicant of Applicant’s Mark will be likely to cause confusion, mistake,
`
`or deception with Opposer’s SS Link Mark, and result in the belief that Applicant or Applicant’s
`
`goods are in some way legitimately connected with, sponsored by, or approved by Opposer,
`
`
`
`resulting in damage and injury to Opposer. Persons familiar with Opposer’s SS Link Mark
`
`would be likely to buy Applicant’s goods as and for a product made a11d sold by Opposer. Any
`
`such confusion in trade inevitably would result in loss of sales to Opposer. Furthermore, any
`
`defect, objection, or fault found with Applicant’s products marketed under Applicant’s Mark
`
`would necessarily reflect upon and seriously injure the reputation that Opposer has established
`
`for its products merchandised under Opposer’s SS Link Mark.
`
`9.
`
`Any use Applicant has made or may make of Applicant’s Mark, is and will be
`
`without Opposer°s consent or permission.
`
`10.
`
`Applicant has no good faith intention to use Applicant’s Mark. Instead, Applicant
`
`filed and continues to prosecute this trademark application in bad faith, as is clear from the letter
`
`that Applicant wrote to Opposer on about May 9, 2002. Applicant sent the letter to Opposer,
`
`(before Opposer even contacted Applicant). In Applicant’s letter, Applicant proposes that “you
`
`[Opposer] and me together make a world first famous fashion masterpiece by grafting well the
`
`[Applicant’s Mark] developed by me and the [Opposer’s SS Link Mark] developed by your
`
`company.” It is clear from App1icant’s letter that:
`
`a.
`
`Applicant knew of Opposer’s SS Link Mark prior to Applicant contacting
`
`Opposer;
`
`b.
`
`Applicant knew that Opposer’s SS Link Mark and Applicant’s Mark were, at
`
`least, confusingly similar. (Otherwise, why would Applicant contact Opposer?)
`
`c.
`
`Applicant is an unknown person (“anonymity like me”), but he demanded that
`
`Opposer give him a job: “If I and your company together make a merger
`
`
`
`company, I am confident to grow it without fail but into fashion company
`
`competent to raise sale record over one billion dollars per year with three or five
`
`years.” If not, he was “prepared to leave the company without lingering at any
`
`job position or title in that company.” In other words, Applicant wanted a job and
`
`a salary from Opposer because Applicant had filed for a trademark (Applicant’s
`
`Mark) that is a close copy of Opposer’s SS Link Mark.
`
`1 1.
`
`On August 6, 2002, Applicant sent a further letter to Opposer.
`
`In such letter,
`
`Applicant proposes the creation of a company that includes Opposer’s trademarks.
`
`In exchange
`
`for Applicant’s contribution of his applications and registrations for App1icant’s Mark, Applicant
`
`proposes to take a twenty—five percent (25%) share in the company. This is extortion. Opposer
`
`is a long existing, internationally famous, and successful company that has sold about US$500
`
`million worth of products over the last twenty (20) years under the STUSSY mark and/or SS
`
`Link Mark. Applicant has no company and no business. Applicant has merely filed for
`
`variations on Opposer’s famous SS Link Mark and now Applicant wants twenty—five percent
`
`(25%) of Opposer.
`
`12.
`
`Applicant has no good faith intention to make trademark use of Applicant’s Mark
`
`on each or any of the goods listed in the notice of publication for Applicant’s Mark.
`
`
`
`WHEREFORE, registration by Applicant of the aforesaid Applicant’s Mark for the
`
`aforesaid goods will be damaging to Opposer, and Opposer therefore requests that the
`
`Opposition be sustained.
`
`John R. Sommer
`
`17426 Daimler Street
`
`Irvine, California 92614
`
`(949) 752-5344
`Fax: (949) 752-5439
`SOMMER@STUSSY.COM
`
`Attorneys for Petitioner
`Stussy, Inc.
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