Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA153298
`ESTTA Tracking number:
`07/26/2007
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91176273
`Plaintiff
`Brown Shoe Company, Inc.
`Christopher C. Larkin
`Seyfarth Shaw LLP
`2029 Century Park East, Suite 3300
`Los Angeles, CA 90067-3063
`UNITED STATES
`Other Motions/Papers
`Christopher C. Larkin
`clarkin@seyfarth.com, kelko@seyfarth.com
`/Christopher C. Larkin/
`07/26/2007
`Consented Motion for Leave to File First Amended Notice of Opposition.pdf ( 7
`pages )(168362 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`
`ESTTA153298
`ESTTA Tracking number:
`07/26/2007
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91176273
`Plaintiff
`Brown Shoe Company, Inc.
`Christopher C. Larkin
`Seyfarth Shaw LLP
`2029 Century Park East, Suite 3300
`Los Angeles, CA 90067-3063
`UNITED STATES
`Other Motions/Papers
`Christopher C. Larkin
`clarkin@seyfarth.com, kelko@seyfarth.com
`/Christopher C. Larkin/
`07/26/2007
`Consented Motion for Leave to File First Amended Notice of Opposition.pdf ( 7
`pages )(168362 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of Application Serial No. 78/375,027
`Published in the Official Gazette of September 19, 2006
`
`BROWN SHOE COMPANY, ENC,
`
`Opposer,
`
`V.
`
`MOLLY D. ROBBENS,
`
`Applicant.
`
`Opposition No. 91176273
`
`CONSENTED MOTION FOR LEAVE TO FILE
`FIRST AMENDED NOTICE OF OPPOSITION
`
`Pursuant to Rule l5(a) of the Federal Rules of Civil Procedure and Rule 2.107 of the
`
`Trademark Rules of Practice, opposer Brown Shoe Company, lric. hereby moves the Board for
`
`leave to file a First Amendeé Notice of Opposition in the form attached hereto as Exhibit 1.
`
`Applicant’s counsel, Austin G. Bosarge, Esq. of Turning Point Law, inc., consented to
`
`the tiling of the First Amended Notice of Opposition by telephone on July 26, 2007.
`
`Dated: July 26, 2007
`
`Respectfully submitted,
`
`SEYFARTH SHAW LLP
`
`"By: E
`
`Christopher C. Larkin
`Attorneys for Opposer
`BROWN SHOE COMPANY, INC.
`
`2029 Century Park East, Suite 3300
`Los Angeles, CA 90067-3063
`Telephone: (310) 277—7200
`Facsimile:
`(310) 201-5219
`
`
`
`EXHIBIT 1
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFECE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter ofApplication Serial Number: 78/375,027
`Published in the Official Gazette of September 19, 2006
`
`BROWN SHOE COMPANY, INC,
`
`Opposer,
`
`v.
`
`Opposition No. 91 176273
`
`MOLLY D. ROBBlNS,
`
`Applicant.
`
`FIRST AMENDED NOTICE OF OPPOSITION
`
`Reference is made to Application Serial No. 78f375,027 for PALOMITA in
`
`International Class 25, published in the Official Gazette on September 19, 2006. Opposer,
`
`Brown Shoe Company, Inc., obtained an extension of time until March E8, 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 OPi’OSITION
`
`3.
`
`Opposer, Brown Shoe Company, Inc., is a corporation organized and existing
`
`under the laws ofNew 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
`
`commerce in connection with footwear and related goods.
`
`
`
`3.
`
`Brown Shoe owns U.S. Trademark Registration No. 2,993,403 for .PALOl\/EA in
`
`connection with “ciothing, narneiy, belts, shirts, blouses, pants, dresses, skirts, shorts, jackets,
`
`coats, undergarments, footwear, hosiery and headwear,” with a filing date of April 2, 2002 and
`
`a iisted first use date of July 12, 1983. This registration issued on September 6, 2005.
`
`4.
`
`Many years prior to the filing of U.S. Application Seriai No. 78/375,027 which is
`
`the subject of this opposition, Brown Shoe adopted and began using its PAL-OMA mark in
`
`CDI’3’}fI'i€I‘CE3.
`
`5.
`
`Prior to the filing ofU.S. Application Serial No. 78/375,027 which is the subject
`
`of this opposition, Brown Shoe had already filed its application to register PALOMA with the
`
`US. Patent and Trademark Office, which then issued as U.S. Trademark Registration No.
`
`2,993,403.
`
`6.
`
`Brown Shoe owns U.S. Trademark Registration No. 3,100,693 for PAL-OMA 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 aiso
`
`owns substantial use—based rights in and to the PALOMA and FALOMA and Design trademarks.
`
`9.
`
`By Virtue of its longstanding use in commerce and extensive advertising, Brown
`
`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.
`
`1 E.
`
`Applicant owns U.S. Appiication Seriai No. 78/375,027, which seeks to register
`
`PALOIVEITA (“Appiicant’s Mark”) for “shirts, pants, shoes and hats” in international Class 25
`
`(“Appiieanfis Goods”), as evidenced by the publication of the mark on September 19, 2006.
`
`12.
`
`On information and belief, Appiicant fiied Seriai No. 78/375,027 on February 26,
`
`2004 based on intended use.
`
`33.
`
`On information and belief, Applicant has begun using the PALOMITA mark in
`
`commerce in the United States in connection with all or some of App1icant’s Goods and has
`
`made widespread use of the federal registration symboi ® in connection with the PALOMITA
`
`mark even though the PALOMITA mark is not now and never has been registered in the United
`
`States. On information and belief, Applicant has used the federal registration symbol ® in
`
`connection with the PALOMITA mark with the intent to deceive purchasers and prospective
`
`purchasers of goods sold under the .PA.LOl\/iiTA mark into beiieving Inistakeniy that the mark is
`
`federally registered. Appiieant’s mark is unregistrabie because of Appiicanfs fraudulent misuse
`
`of the federal registration syrnboi ®.
`
`14.
`
`Applicarifs Mark is confusingly similar to Brown Shoe’s registered trademarks
`
`PALOMA and PALOMA and Design, which were adopted many years prior to the iiiing date of
`
`US. Application Serial No. '78/375,027. Moreover, Brown Shoe’s registration for PALOMA has
`
`an earlier filing date and registration date than Appiicant’s Mark. Appiicant’s mark is
`
`unregistrabie under Section 2(d) of the United States Trademark Act, 15 U.S.C. § i0S2(d).
`
`15.
`
`On information and belief, the intended customer markets for Brown Shoe's
`
`
`
`PALOMA products and Appiicant’s Goods are likeiy to overlap.
`
`I6.
`
`On information and beiief, AppIicant’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.
`
`17.
`
`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 Appiicanfs Goods are authorized or sponsored by Brown Shoe, and such confusion in
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`the trade and among customers inevitably would result in damage to Brown Shoe. Furthermore,
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`any defect, objection or fault found with Appiicanfs 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 App1icant’s application to register PALOMITA be denied.
`
`Dated: July 26, 2007
`
`Respectfully submitted,
`
`SEYFARTH SHAW LLP
`
`By: 2/...‘
`Christopher C. Larkin
`Attorneys for Oppose:
`BROWN SHOE COMPANY, INC.
`
`2029 Century Park East, Suite 3300
`
`Los Angeles, CA 900613063
`Telephone:
`(310) 277-7200
`
`Facsimile:
`
`(3l0) 2016219
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on J uiy 26, 2007, I served the foregoing Consented Motion for Leave
`
`to File First Amended Notice of Opposition on the appiicant by mailing a true copy thereof by
`
`First Ciass US. Maii, postage prepaid, to appiicanfs counsei at the foilowing address:
`
`Austin G. Bosarge, Esq.
`Turning Point Law, Inc.
`100 Smith Ranch Road, Suite 1 16
`
`San Rafaei, CA 94903
`
`§;%sm.s.g
`
`Eieanor E
`
`LAE 6646777.]
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