HCI DIRECT,
`u_::._._:n_:r_:L_._au:a|_aL_0s_:p.._a|_:
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`INC.,
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`VS.
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`Opposer,
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`HOLSTED MARKETING INC.’
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`Applicant.
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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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`I
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`OPPOSITION No.
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`Ser. No. 76/630,741
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`(i_r“-
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`TTAB
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`NOTICE OF OPPOSITION
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`HCI Direct, Inc., a corporation of Delaware, having its
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`principal place of business at 3050 Tillman Drive, Bensalem,
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`PA 19020, believes that it will be damaged by the registration
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`of the mark shown in Application Serial Number 76/630,741 in
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`International Class 25 and hereby opposes the same.
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`This application was published on January 2,2007 in the
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`Official Gazette of the United States Patent and Trademark
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`Office.
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`As grounds for the opposition it is alleged that:
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`1. Applicant, Holsted Marketing Inc.,
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`is on information
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`703637-9600
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`and belief,
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`a New York corporation with an address at 135
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`Madison Avenue, New York, NY 10016-6712, and seeks to register
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`the trademark S0 SILKY for hosiery in Class 25 as set forth in
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`1727KINGSTREET
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`ALEXANDRIA,VIRGINIA22314-2700
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`01/,§4/2007 01000050 003013037 ‘?sk§§0§’4? not e d app 1 1 ca t 1 on '
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`o1rc:e402
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`300.0000
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`_1_
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`A I_I
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`01-03-2007
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`U.S. Patent & TMOfclTM Mail Rcpt Dr. #22
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`

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`2.
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`The application, here opposed, was filed on February
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`8, 2005, based upon a claim of a bona fide intent—to—use the
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`mark on said goods.
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`3. Opposer is well known in the field of women's
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`hosiery, pantyhose and similar products as well as related
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`fields of commerce and has and is presently engaged in the
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`manufacture and marketing of its products in the United States
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`as well as throughout the world.
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`4. Opposer is the successor to Hosiery Corporation of
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`America,
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`a Delaware corporation, whose operations and offices
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`were conducted and located in Benasalem, PA.
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`5. Opposer has used it's well-recognized trademark and
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`brand SILKIES and variants thereof on its hosiery goods and
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`other products,
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`in the United States marketplace and abroad
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`for many years and at least as early as August 3, 1979 (by its
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`predecessor, Hosiery Corporation of America)
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`6.
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`To the best of Opposer’s knowledge and belief, no use
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`has as yet occurred of the Applicant's mark in commerce.
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`

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`7.
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`Opposer’s mark SILKIES (Stylized)
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`is the subject of
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`United States Trademark Registration No. 1,503,070, registered
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`on September 6, 1988, which registration issued under Section
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`2(f),
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`is still in force and is incontestible under Section 15
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`of the Trademark Act. This registration covers pantyhose and
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`hosiery not manufactured of silk in Class 25 and was based on
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`actual use under Section l(a) dating back to August 3, 1979.
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`A certified or true copy of this registration showing status
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`and title will be introduced during Opposer’s testimony
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`period.
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`8. Opposer is also the owner of a number of other
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`registrations, all still in force, covering variants of the
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`original SILKIES trademark for hosiery and similar goods in
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`Class 25 as follows:
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`SILKIES JUST FOR ME!
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`Reg. No.
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`2,985,846, registered
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`August 16,
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`2005;
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`SILKIES SHEER RENU Reg. No. 3,003,356, registered
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`October 4, 2005;
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`SILKIES ULTRA Reg. No. 2,248,218, registered
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`May 25, 1999 and now incontestible under Section 15;
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`THE MOST BEAUTIFUL LEGS IN THE WORLD WEAR...SILKIES
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`Reg. No. 2,373,123, registered August 1, 2000; now
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`incontestible under Section 15; and
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`_3_
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`

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`LITTLE SILKIES Reg. NO.
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`2,350,315, registered
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`May 16, 2000 and now incontestible under Section 15.
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`Certified or true copies of these registrations showing
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`status and title will be submitted and offered into evidence
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`during Opposer’s testimony period.
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`9. Opposer has created and maintained a family of
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`“SILKIES” trademarks which have achieved great commercial
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`success in the marketplace and are recognized by the consumer
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`as quality products manufactured and distributed by the
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`Opposer.
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`10. Opposer has at all times marked its hosiery products
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`or their packaging with the SILKIES trademarks in manners
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`customary in the trade. Such marking has included the
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`registration symbol, ®.
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`11. Opposer has advertised its SILKIES brands
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`extensively in numerous media and has spent substantial funds
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`in publicizing these brands.
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`12. Applicant's mark, SO SILKY,
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`is so similar to
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`Opposer’s marks as to be likely to cause confusion, mistake or
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`deception as to the source of the goods of the Applicant
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`_4_
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`

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`especially since Applicant's mark is intended to be used in
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`conjunction with goods that are identical to the goods of
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`Opposer.
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`13.
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`The marks here in issue are visually and
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`phonetically similar.
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`Applicant's mark includes Opposer’s
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`entire mark “SILKIES", but
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`in the singular form.
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`14.
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`If Applicant is permitted to use and register the
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`mark herein opposed for the goods specified in it's
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`application, confusion in the trade and by the consumer will
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`likely result, causing damage and injury to the Opposer.
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`Persons familiar with Opposer’s mark would be likely to
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`purchase Applicant's products in the mistaken belief that such
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`goods originate with Opposer. Any such confusion will
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`inevitably result in loss of sales to Opposer.
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`Moreover, any
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`objection or fault found with Applicant's products sold under
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`the mark herein opposed would necessarily reflect upon and
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`seriously injure the reputation which Opposer has established
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`for its products offered under its mark and thereby erode the
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`valuable goodwill established by Opposer in its marks.
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`15. Registration of the mark at issue herein to Applicant
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`will be a source of damage and injury to Opposer.
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`

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`1.-
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`16.
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`Since Opposer is relying on its incontestible
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`registrations and others, and the application here opposed is
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`based upon intent-to—use the mark, priority is not an issue.
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`WHEREFURE, Opposer prays that Application Serial Number
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`76/630,741 be rejected, and that registration of the mark
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`shown therein for the goods set forth therein be refused and
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`denied.
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`The fee of $300.00 required by Trademark Rule of
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`Practice 2.6 (a)(l7)
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`is enclosed in the form of a charge to
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`counsel's credit card.
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`Respectfully submitted,
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`‘X4//A
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`By:
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`Donald L. Dennison
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`Dennison, Schultz & Macdonald
`Attorneys for Opposer
`1727 King Street
`Suite 105
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`Alexandria, VA 22314
`15
`(703)837-9600 Ext.
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`Date: January 3, 2007
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`

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`‘Dennison, Schultz & MacDonald
`1727 King Street, Suite 105
`
`Alexandria, VA 22314
`_
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`I A&coUp.rr_p:;U;rBgR
`YOUR ‘NUMBER
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`A
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`Applicant‘/Registrant‘ Holsted Marketing Inc.
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`
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`76 630 741
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`.
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`Serial/Reg. No.:
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`Our File No.:
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`300.00
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`(Notice of Opposition filed b HCI Direct
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`Inc.
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` Amount:
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