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Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA130642
`ESTTA Tracking number:
`03/19/2007
`
`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
`Granted to Date
`of previous
`extension
`Address
`
`BROWN SHOE COMPANY, INC.
`03/18/2007
`
`8300 Maryland Avenue
`St. Louis, MO 63105
`UNITED STATES
`
`Attorney
`information
`
`Bruce Haraguchi
`Seyfarth Shaw LLP
`131 S. Dearborn Street, Suite 2400
`Chicago, IL 60603
`UNITED STATES
`bharaguchi@seyfarth.com Phone:312-460-5000
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`78375027
`03/19/2007
`
`Publication date
`Opposition
`Period Ends
`
`09/19/2006
`03/18/2007
`
`Robbins, Molly D.
`10 Mahogany Drive
`San Rafael, CA 94903
`UNITED STATES
`Goods/Services Affected by Opposition
`
`Class 025.
`All goods and sevices in the class are opposed, namely: Shirts, pants, shoes and hats
`
`Attachments
`
`palomita-opp.pdf ( 4 pages )(170046 bytes )
`
`Signature
`Name
`Date
`
`/Bruce Haraguchi/
`Bruce Haraguchi
`03/19/2007
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In re Trademark Application Serial Number: 78/375027
`
`BROWN SHOE COMPANY, INC.
`
`Opposer,
`
`Applicant.
`
`\J\/\./Q/\/K/‘\./\)\/\)
`
`Opposition No.
`
`MOLLY D. ROBBINS
`
`Commissioner for Trademarks
`P.O. Box 1451
`
`Alexandria, Virginia 223 13-145 1
`
`NOTICE OF OPPOSITION
`
`Reference is made to Application Serial No. 78/375027 for PALOMITA in International
`
`Class 25, published in the Official Gazette on September l9, 2006. Opposer, Brown Shoe
`
`Company, Inc., obtained an extension of time until March 18, 2007 to file a notice of opposition,
`
`which is extended to March 19, 2007 under TTAB procedures for filing dates ending on a
`
`Sunday. Brown Shoe Company, Inc. believes it would be damaged by the registration of the
`
`mark in Serial No. 78/375027, and hereby opposes the same.
`
`GROUNDS FOR OPPOSITION
`
`l.
`
`Opposer, Brown Shoe Company, Inc., is a corporation organized and existing
`
`under the laws of New York, with its principal place of business at 8300 Maryland Avenue, St.
`
`Louis, MO 63105.
`
`2.
`
`For many years Brown Shoe and its predecessors, related companies and licensees
`
`(hereinafter, “Brown Shoe”)haVe used the trademark PALOMA and PALOMA and Design in
`
`CHI 111919862
`
`

`
`commerce in connection with footwear and related goods.
`
`3.
`
`Brown Shoe owns U.S. Trademark Registration No. 2993403 for PALOMA in
`
`connection with “clothing, namely, belts, shirts, blouses, pants, dresses, skirts, shorts, jackets,
`
`coats, undergarments, footwear, hosiery and headwear,” with a filing date of April 2, 2002 and a
`
`listed first use date of July 12, 1983. This registration issued on September 6, 2005.
`
`4.
`
`Many years prior to the filing of US. Application Serial No. 78/375027 which is
`
`the subject of this opposition, Brown Shoe adopted and began using its PALOMA mark in
`
`commerce.
`
`5.
`
`Prior to the filing of U.S. Application Serial No. 78/375027 which is the subject
`
`of this opposition, Brown Shoe had already filed its application to register PALOMA with the
`
`U.S. Patent and Trademark Office, which then issued as U.S. Trademark Registration No.
`
`2993403.
`
`6.
`
`Brown Shoe owns U.S. Trademark Registration No. 3100693 for PALOMA and
`
`Design in connection with “shoes,” with a filing date of June 23, 2005 and a listed first use date
`
`of July 12, 1983. This registration issued on June 6, 2006.
`
`7.
`
`Many years prior to the filing of US. Application Serial No. 78/375027 which is
`
`the subject of this opposition, Brown Shoe adopted and began using its PALOMA and Design
`
`mark in commerce.
`
`8.
`
`Brown Shoe’s registration of both PALOMA and PALOMA and Design provides
`
`prima facie evidence of Brown Shoe’s ownership of those marks and of Brown Shoe’s exclusive
`
`right to use those marks in commerce in connection with the specified goods. Brown Shoe also
`
`owns substantial use~based rights in and to the PALOMA and PALOMA and Design trademarks.
`
`9.
`
`By virtue of its longstanding use in commerce and extensive advertising, Brown
`
`CH1 ll19l986.2
`
`

`
`Shoe’s PALOMA mark has become well-known in the relevant industry, and Brown Shoe owns
`
`considerable goodwill in this mark in connection with its products.
`
`10.
`
`On information and belief, Applicant, Molly D. Robbins (“Applicant”), is an
`
`individual residing at 10 Mahogany Drive, San Rafael, CA 94903.
`
`11.
`
`Applicant owns U.S. Application Serial No. 78/375027, which seeks to register
`
`PALOMITA (“Applicant’s Mark”) for “shirts, pants, shoes and hats” in International Class 25
`
`(“Applicant’s Goods”), as evidenced by the publication of the mark on September 19, 2006.
`
`12.
`
`On information and belief, Applicant filed Serial No. 78/375027 on February 26,
`
`2004 based on intended use.
`
`13.
`
`On information and belief, Applicant has not yet begun using PALOMITA in
`
`commerce in connection with Applicant’s Goods or any other goods.
`
`14.
`
`On information and belief, Applicant has not yet begun using PALOMITA
`
`anywhere in connection with Applicant’s Goods or any other goods.
`
`15.
`
`Applicant’s Mark is confusingly similar to Brown Shoe’s registered trademarks
`
`PALOMA and PALOMA and Design, which were adopted many years prior to the filing date of
`
`U.S. Application Serial No. 78/375027. Moreover, Brown Shoe’s registration for PALOMA has
`
`an earlier filing date and registration date than Applicant’s Mark.
`
`16.
`
`On information and belief, the intended customer markets for Brown Shoe’s
`
`PALOMA products and App1icant’s Goods are likely to overlap.
`
`17.
`
`On information and belief, Applicant’s Goods are identical or closely related to
`
`the goods which have been offered by Brown Shoe in connection with its PALOMA and
`
`PALOMA and Design trademarks, including products for which Brown Shoe owns registered
`
`rights.
`
`CH11ll9l986.2
`
`

`
`18.
`
`If Applicant were permitted to register PALOMITA for the goods listed in
`
`Applicant’s application, customers and the relevant trade would likely be confused as to the
`
`source, sponsorship, or affiliation of such goods, thereby causing damage and injury to Brown
`
`Shoe. Persons already familiar with Brown Shoe's products would be likely to be confused as to
`
`whether Applicant's Goods are authorized or sponsored by Brown Shoe, and such confusion in
`
`the trade and among customers inevitably would result in damage to Brown Shoe. Furthermore,
`
`any defect, objection or fault found with Applicant's Goods would likely reflect upon and injure
`
`the good reputation Brown Shoe has established for its products.
`
`WHEREFORE, Brown Shoe respectfully requests that this opposition be
`
`sustained, and that Applicant’s application to register PALOMITA be denied.
`
`Dated: March 19, 2007
`
`Respectfully submitted,
`
`Bruce Ha hi
`
`SEYFARTH SHAW LLP
`
`Attorneys for Opposer
`131 S. Dearborn Street, Suite 2400
`Chicago, Illinois 60603
`Tel:
`(312) 460-5000
`Fax:
`(312) 460-7000
`
`Cl-ll lll9l986.2

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