Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA160863
`ESTTA Tracking number:
`09/05/2007
`
`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
`Entity
`Address
`
`Tommy Hilfiger Licensing LLC
`limited liability company
`601 W. 26th Street
`New York, NY 10001
`UNITED STATES
`
`Citizenship
`
`Delaware
`
`Attorney
`information
`
`Robert W. Sacoff
`Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP
`311 South Wacker Drive Suite 5000
`Chicago, IL 60606
`UNITED STATES
`rsacoff@pattishall.com, mmonahan@pattishall.com Phone:312 554 8000
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`77098056
`09/05/2007
`
`Publication date
`Opposition
`Period Ends
`
`08/07/2007
`09/06/2007
`
`Isdin, S.A.
`Avda Diagonal, 520
`Barcelona, 08006
`SPAIN
`Goods/Services Affected by Opposition
`
`Class 005.
`All goods and services in the class are opposed, namely: PHARMACEUTICAL PREPARATIONS,
`NAMELY PREPARATIONS FOR SKIN CARE AND TREATMENT, MOUTH AND DENTAL CARE,
`PREPARATIONS FOR THE TREATMENT OF GUMS, SENSITIVE TEETH, TEETHING, CARIES
`AND CANKER SORES, DERMATOLOGICAL PREPARATIONS, GYNECOLOGICAL
`PREPARATIONS FOR THE TREATMENT OF MENOPAUSE/OSTEOPOROSIS, MYCOSIS AND
`VIRICAL INFECTIONS, ANTIBIOTICS, ANALGESICS, ANTI-INFLAMMATORY PREPARATIONS
`AND FUNGICIDES, PREPARATIONS FOR ALLERGY, HORMONE AND OSTEOPOROSIS
`TREATMENT, MEDICAL PLASTERS
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`Dilution
`
`Trademark Act section 2(d)
`Trademark Act section 43(c)
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`
`1460988
`
`Application Date
`
`11/04/1985
`
`

`
`Registration Date
`
`10/13/1987
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`NONE
`
`THE TRADEMARK IS A COMBINATION OF DIFFERENT COLORED
`GEOMETRIC SHAPES.
`Class 025. First use: First Use: 1985/01/00 First Use In Commerce: 1985/01/00
`CLOTHING FOR MEN AND WOMEN, NAMELY, SHIRTS, PANTS, JACKETS,
`SWEATERS, SHORTS, BELTS, VESTS, SPORT JACKETS, COATS, RAIN
`COATS, PARKAS
`
`U.S. Registration
`No.
`Registration Date
`
`1727740
`
`10/27/1992
`
`Application Date
`
`07/02/1991
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`NONE
`
`NONE
`
`Class 025. First use: First Use: 1985/01/00 First Use In Commerce: 1985/01/00
`clothing for men and boys, namely, shirts, sweaters, sportcoats, pants,
`sweatshirts, shorts, sport jackets, raincoats, parkas, overcoats, bathing suits,
`vests, turtlenecks
`Class 042. First use: First Use: 1985/08/00 First Use In Commerce: 1985/08/00
`retail clothing store services
`
`U.S. Registration
`No.
`Registration Date
`
`1808520
`
`11/30/1993
`
`Application Date
`
`01/30/1991
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`NONE
`
`NONE
`
`Class 025. First use: First Use: 1993/09/25 First Use In Commerce: 1993/09/25
`socks, ties, hats, caps and blazers
`
`U.S. Registration
`No.
`Registration Date
`
`2030406
`
`01/14/1997
`
`Application Date
`
`01/30/1991
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`NONE
`
`NONE
`
`Class 003. First use: First Use: 1995/03/00 First Use In Commerce: 1995/03/00
`cologne, eau de toilette, shaving lotion, deodorant, soap for personal use
`Class 018. First use: First Use: 1994/11/00 First Use In Commerce: 1994/11/00
`articles of leather and imitation leather, namely wallets, credit card cases,
`billfolds, umbrellas, and travelling bags
`
`

`
`Class 025. First use: First Use: 1994/06/00 First Use In Commerce: 1994/06/00
`bathrobes, tuxedos, pajamas, underpants, undershirts, and suspenders
`
`U.S. Registration
`No.
`Registration Date
`
`2063504
`
`05/20/1997
`
`Application Date
`
`09/06/1996
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`NONE
`
`The mark is lined for the colors red and blue.
`
`Class 009. First use: First Use: 1996/07/00 First Use In Commerce: 1996/07/00
`eyewear, namely, eyeglasses, sunglasses and eyeglass frames and lenses and
`eyewear accessories, namely, cases and holders
`
`U.S. Registration
`No.
`Registration Date
`
`2159029
`
`05/19/1998
`
`Application Date
`
`06/13/1997
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`NONE
`
`NONE
`
`Class 025. First use: First Use: 1997/01/00 First Use In Commerce: 1997/01/00
`clothing, namely, shirts, T-shirts, sweatshirts, shorts, pants, socks and footwear
`
`U.S. Registration
`No.
`Registration Date
`
`2168652
`
`06/23/1998
`
`Application Date
`
`09/06/1996
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`NONE
`
`The mark is lined for the colors red and blue.
`
`Class 014. First use: First Use: 1997/11/16 First Use In Commerce: 1997/11/16
`jewelry made of precious and non-precious metals and stone, namely, cuff-links
`
`U.S. Registration
`No.
`Registration Date
`
`2213511
`
`12/22/1998
`
`Application Date
`
`09/06/1996
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`NONE
`
`The mark is lined for the colors red and blue.
`
`Class 025. First use: First Use: 1997/01/15 First Use In Commerce: 1997/01/15
`footwear, namely, shoes, boots, sneakers, sandals, and slippers
`
`U.S. Registration
`No.
`
`2237862
`
`Application Date
`
`09/06/1996
`
`

`
`Registration Date
`
`04/06/1999
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`NONE
`
`The mark is lined for the colors red and blue.
`
`Class 021. First use: First Use: 1998/09/01 First Use In Commerce: 1998/09/01
`household utensils, namely, sponges, brushes, combs
`Class 024. First use: First Use: 1998/09/01 First Use In Commerce: 1998/09/01
`bed and table covers, namely, fitted sheets, non-fitted sheets, pillowcases,
`shams, bed spreads and dust ruffles, towels, and wash cloths, and curtains
`
`U.S. Registration
`No.
`Registration Date
`
`2348651
`
`05/09/2000
`
`Application Date
`
`06/29/1999
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`NONE
`
`NONE
`
`Class 020. First use: First Use: 1999/01/01 First Use In Commerce: 1999/01/01
`Key lanyards
`
`U.S. Registration
`No.
`Registration Date
`
`2352799
`
`05/23/2000
`
`Application Date
`
`09/30/1997
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`NONE
`
`NONE
`
`Class 021. First use: First Use: 1998/06/00 First Use In Commerce: 1999/05/00
`soap dishes, soap dispensers, trash cans, plastic cups and shower caddies
`Class 024. First use: First Use: 1998/06/00 First Use In Commerce: 1999/05/00
`Bed accessories, namely, bed spreads, bed blankets, comforters, quilts, duvet
`covers, swag window treatments, bed linens, non-fitted bed sheets, pillow
`cases, bath accessories, textile bath mats, terry-cloth bath mats, bath linens,
`shower curtains, towels
`
`U.S. Registration
`No.
`Registration Date
`
`2663494
`
`12/17/2002
`
`Application Date
`
`09/30/1997
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`NONE
`
`NONE
`
`Class 020. First use: First Use: 1998/05/00 First Use In Commerce: 1998/05/00
`pillows
`Class 021. First use: First Use: 1998/06/00 First Use In Commerce: 1998/06/00
`
`

`
`soap holders
`Class 024. First use: First Use: 1998/06/00 First Use In Commerce: 1998/06/00
`dust ruffles, fitted bed sheets, upholstery and curtain fabrics
`Class 027. First use: First Use: 1998/06/00 First Use In Commerce: 1998/06/00
`Rugs, plastic and/or rubber bath mats
`
`U.S. Registration
`No.
`Registration Date
`
`2663869
`
`12/17/2002
`
`Application Date
`
`05/19/2000
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`NONE
`
`NONE
`
`Class 020. First use: First Use: 1998/05/00 First Use In Commerce: 1998/05/00
`pillows and jewelry cases not of precious metal
`
`U.S. Registration
`No.
`Registration Date
`
`2672727
`
`01/07/2003
`
`Application Date
`
`05/19/2000
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`NONE
`
`NONE
`
`Class 014. First use: First Use: 2000/06/00 First Use In Commerce: 2000/06/00
`Jewelry made of precious and non-precious metals and stones, namely,
`bracelets, necklaces, brooches, rings, tie tacks, watches and clocks
`
`U.S. Registration
`No.
`Registration Date
`
`2739594
`
`07/22/2003
`
`Application Date
`
`07/06/2001
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`NONE
`
`NONE
`
`Class 028. First use: First Use: 1997/01/31 First Use In Commerce: 1997/01/31
`Toys, games and playthings, children's and infant's toys, namely baby rattles;
`play building blocks; plush building blocks; stuffed and plush animals; infant crib
`toys; puppets; toy mobiles; play quilts; toy music boxes; squeezable squeaking
`toys; educational and parlor-type board and card games and accessory parts for
`playing same; jigsaw puzzles; bath and water toys; dolls; doll accessories; toy
`clocks; electronic toys and equipment for playing electronic games, namely,
`stand alone video game machines; hand-held units for playing electronic games;
`flying discs; golf bags; balls and sports balls, namely, baseballs, basketballs,
`golf balls, soccer balls, tennis balls; rubber action balls; plush balls; golf ball gift
`sets with divot repair tools; golf tees; ball markers; golf flags; golf accessories,
`namely, club head covers; golf ball sleeves; tennis racket covers; toy pails; toy
`shovels; kites; boomerangs; Christmas tree ornaments
`
`

`
`U.S. Registration
`No.
`Registration Date
`
`3029679
`
`12/13/2005
`
`Application Date
`
`06/12/2002
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`NONE
`
`NONE
`
`Class 024. First use: First Use: 2003/00/00 First Use In Commerce: 2003/00/00
`bed accessories, namely, mattress pads and bed pads
`
`U.S. Registration
`No.
`Registration Date
`
`3076983
`
`04/04/2006
`
`Application Date
`
`05/19/2000
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`NONE
`
`NONE
`
`Class 021. First use: First Use: 1998/12/31 First Use In Commerce: 1998/12/31
`Utensils and containers, namely, dishes; glasses, namely, drinking glasses, shot
`glasses, and preserve glasses; mugs; spatulas; cups; baking and cooking pans;
`pots and dishes; dinnerware and flatware, namely, serving spoons not of
`precious metals; non-electric kettles; candlestick holders not of precious metal;
`electric toothbrushes; vases; jugs; ice buckets; gloves for household purposes;
`figurines made of ceramics and flower pots
`
`U.S. Registration
`No.
`Registration Date
`
`3075185
`
`04/04/2006
`
`Application Date
`
`05/24/2004
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`NONE
`
`NONE
`
`Class 016. First use: First Use: 1982/07/31 First Use In Commerce: 1982/07/31
`Publications and printed matter, namely, tags and labels made of paper,
`anniversary books, fiction and non-fiction books in the field of fashion and the
`fashion industry, personal organizers and planners, address books, agendas,
`photo albums, calendars, stationery, paper folders, paper portfolios, book marks,
`postcards, stickers, gift wrapping paper, gift boxes made of paper, gift boxes
`made of cardboard, tissue paper for packaging, shopping bags made of paper,
`and catalogs and newsletters in the fields of fashion, lifestyles and other topics
`of general interest namely culture, sports, modeling, cosmetics, music and
`entertainment; mounted and unmounted photographs and posters; and desk
`accessories comprising of pencil holders, pencil cases, erasers, pencils and
`pens, and pencil sharpeners
`Class 024. First use: First Use: 1982/07/31 First Use In Commerce: 1982/07/31
`Bed and bath linen, namely, bed covers, eiderdowns, duvets, duvet covers, bed
`blankets, bed sheets, bed quilts, dust ruffles and pillow cases, pillow shams,
`mattress covers, fitted toilet lid covers made of fabric, towels, and face cloths;
`table covers made of fabric, table cloths, table napkins, fabric place mats,
`
`

`
`curtains, and draperies, all made of textile materials or of plastic, and cloth
`labels
`
`Attachments
`
`73566805#TMSN.gif ( 1 page )( bytes )
`74181697#TMSN.gif ( 1 page )( bytes )
`74801413#TMSN.gif ( 1 page )( bytes )
`74135114#TMSN.gif ( 1 page )( bytes )
`75161745#TMSN.gif ( 1 page )( bytes )
`75308355#TMSN.gif ( 1 page )( bytes )
`75977159#TMSN.gif ( 1 page )( bytes )
`75976739#TMSN.gif ( 1 page )( bytes )
`75978066#TMSN.gif ( 1 page )( bytes )
`75739291#TMSN.gif ( 1 page )( bytes )
`75979156#TMSN.gif ( 1 page )( bytes )
`75365522#TMSN.gif ( 1 page )( bytes )
`75981829#TMSN.gif ( 1 page )( bytes )
`76053468#TMSN.gif ( 1 page )( bytes )
`76280478#TMSN.gif ( 1 page )( bytes )
`76420738#TMSN.gif ( 1 page )( bytes )
`76053470#TMSN.gif ( 1 page )( bytes )
`76594315#TMSN.jpeg ( 1 page )( bytes )
`Notice of Opposition.pdf ( 11 pages )(307115 bytes )
`
`Signature
`Name
`Date
`
`/Robert W. Sacoff/
`Robert W. Sacoff
`09/05/2007
`
`

`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`TRADEMARK TRIAL AND APPEAL BOARD
`
`In the matter of Trademark Application No. 77/098,056
`For the Mark:
`
`
`
`Opposition No.
`
`) ) ) )
`
`) )
`
`) )
`
`)
`
`Date Published:
`
`August 7, 2007
`
`TOMMY HILFIGER LICENSING LLC,
`
`Opposer,
`
`V.
`
`Applicant.
`
`ISDIN, S.A.,
`
`NOTICE OF OPPOSITION
`
`Opposer, Tomrny Hilfiger Licensing LLC ("Opposer"), a limited liability company
`
`organized and existing under the laws of the State of Delaware and located at 601 W. 26th Street,
`
`New York, New York 10001, believes it will be damaged by registration of the above-identified
`
`mark by Applicant, Isdin, S.A. (“Applicant“), and opposes the application for such registration.
`
`Opposer alleges, on knowledge as to its own acts and otherwise on information and
`
`belief, as follows:
`
`1.
`
`Opposer is one of the best-known fashion companies in the United States and
`
`throughout the world. Beginning in 1985 and continuing to the present, Opposer ("Opposer“ is
`
`used herein to include Tommy Hilfiger Licensing LLC along with its predecessors and licensees)
`
`has been engaged in the manufacture, distribution and sale of all types ofapparel and apparel-
`
`27]63l\Q
`
`

`
`related accessories, and has offered such products for sale in over 1,200 department stores and
`
`specialty retail stores throughout the United States.
`
`2.
`
`Since its inception, Opposer has extensively marketed and advertised its products
`
`in virtually all types of media including, but not limited to: print ads, outdoor and transit ads,
`
`trade advertising, store advertising, television and cinema advertising, retail and in-store
`
`promotions such as brochures and mailing cards.
`
`3.
`
`Beginning in 1985 and long before Applicant filed its intent-to-use application to
`
`register Applicant's Mark, Opposer began using the following design as a trademark, (the “TH
`
`Flag Mark"):
`
`
`
`4.
`
`Since that time, Opposer has continuously used the TH Flag Mark on its products,
`
`and has extensively marketed, advertised, promoted and sold products bearing the TH Flag
`
`Mark in commerce throughout the United States.
`
`5.
`
`As result of Opposer's extensive sales, advertising and promotion of its apparel,
`
`apparel-related accessories and other products under the TH Flag Mark, that mark has become
`
`famous, and has come to signify products originating with Opposer and to symbolize goodwill of
`
`incalculable value.
`
`6.
`
`Opposer has obtained Various U.S. Trademark Registrations for its TH Flag Mark
`
`for numerous products in Classes 3, 9, 14, 16, 18, 20, 21, 24, 25, 27, 28 and 42, including:
`
`

`
`October 13,
`1987
`
`IC 025: Clothing for men and
`Women, namely, shirts, pants,
`jackets, sweaters, shorts, belts,
`vests, sport jackets, coats, rain
`coats, parkas.
`
`1,727,740 October 27,
`
`8'? M 5
`
`I.
`
`, ,3
`
`8
`
`'
`
`_
`
`.
`_
`
`IC 025: Clothing for men and
`boys, namely, shirts, sweaters,
`sportcoats, pants, sweatshirts,
`
`shorts, sport jackets, raincoats,
`parkas, overcoats, bathing suits,
`vests, turtlenecks.
`
`IC 042: Retail clothing store
`services.
`
`1,808,520 November 30,
`
`IC 025: Socks, ties, hats, caps and
`blazers.
`
`IC 003: Cologne, eau de toilette,
`shaving lotion, deodorant, soap
`for personal use.
`
`IC 018: Articles of leather and
`
`imitation leather, namely wallets,
`credit card cases, billfolds,
`umbrellas, and traveling bags.
`
`IC 025: Bathrobes, tuxedos,
`pajamas, underpants, undershirts,
`and suspenders.
`
`

`
`
`
`IC 009: Eyewear, namely,
`eyeglasses, sunglasses and
`eyeglass frames and lenses and
`eyewear accessories, namely,
`cases and holders.
`
`
`
`IC 025: Clothing, namely, shirts,
`T—shirts, sweatshirts, shorts,
`pants, socks and footwear.
`
`IC 014: Jewelry made of precious
`and non-precious metals and
`stone, namely, cuff-links.
`
`
`
`
` IC 025: Footwear, namely, shoes,
`
`
`boots, sneakers, sandals, and
`slippers.
`
`
`
`IC 021: Household utensils,
`
`2,063,504 May 20, 1997
`
`2,159,029 May 19, 1998
`
`2,168,652
`
`June 23, 1998
`
`2,213,511 December 22,
`1998
`
`2,237,862 April 6, 1999
`
`
`
`
`namely, sponges, brushes, combs.
`
`
`
`
`
`
`IC 024: Bed and table covers,
`namely, fitted sheets, non-fitted
`sheets, pillowcases, Shams, bed
`spreads and dust ruffles, towels,
`and wash cloths, and curtains.
`
`
`
`
`
`2,348,651 May 9,2000
`
` IC 020: Key lanyards.
`
`

`
`2,352,799
`
`
`May 23, 2000
`
`
`
`IC 021: Soap dishes, soap
`dispensers, trash cans, plastic
`cups and shower caddies.
`
`
`
`
`
`
`
`
`IC 021: Soap holders.
` IC 024: dust ruffles, fitted bed
`
`sheets, upholstery and curtain
`fabrics.
`
` IC 027: Rugs, plastic and/or
`rubber bath mats.
`
` IC 024.: Bed accessories, namely,
`
`
`
`
`
`
`bed spreads, bed blankets,
`comforters, quilts, duvet covers,
`swag window treatments, bed
`linens, non—f1tted bed sheets,
`pillow cases, bath accessories,
`textile bath mats, teny—cloth bath
`mats, bath linens, shower
`
`
`
`
`
`
`
`
`
`curtains, towels.
`
`
`
`
`
`
`
`IC 020: pillows.
`
`2,663,494 December 17,
`2002
`
`
`2,663,869 December 17,
`2002
`
`IC 020: Pillows and jewelry cases
`not of precious metal.
`
`2,672,727
`
` January 7, 2003
`
`
`
`
`
`
`IC 014: Jewelry made of precious
`and non-precious metals and
`
`stones, namely, bracelets,
`necklaces, brooches, rings, tie
`tacks, watches and clocks.
`
`
`
`

`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`IC 028: Toys, games and
`playthings, children's and infant's
`toys, namely baby rattles; play
`building blocks; plush building
`blocks; stuffed and plush animals;
`infant crib toys; puppets; toy
`mobiles; play quilts; toy music
`boxes; squeezable squeaking toys;
`educational and parlor-type board
`and card games and accessory
`parts for playing same; jigsaw
`puzzles; bath and Water toys;
`dolls; doll accessories; toy clocks;
`electronic toys and equipment for
`playing electronic games, namely,
`stand alone video game machines;
`hand-held units for playing
`electronic games; flying discs;
`golf bags; balls and sports balls,
`namely, baseballs, basketballs,
`golf balls, soccer balls, tennis
`balls; rubber action balls; plush
`balls; golf ball gift sets with divot
`repair tools; golf tees; ball
`markers; golf flags; golf
`accessories, namely, club head
`covers; golf ball sleeves; tennis
`racket covers; toy pails; toy
`shovels; kites; boomerangs;
`Christmas tree ornaments.
`
`
`
`
`IC 024: Bed accessories, namely,
`mattress pads and bed pads.
`
`
`
`
`
`
`IC 021: Utensils and containers,
`namely, dishes; glasses, namely,
`drinking glasses, shot glasses, and
`preserve glasses; mugs; spatulas;
`cups; baking and cooking pans;
`pots and dishes; dinnerware and
`flatware, namely, serving spoons
`
`2,739,594
`
`July 22, 2003
`
`3,029,679 December 13,
`
`

`
`not of precious metals; non-
`electric kettles; candlestick
`holders not of precious metal;
`electric toothbrushes; vases; jugs;
`ice buckets; gloves for household
`purposes; figurines made of
`ceramics and flower pots.
`
`IC 016: Publications and printed
`matter, namely, tags and labels
`made of paper, anniversary books,
`fiction and non—fiction books in
`
`the field of fashion and the
`
`fashion industry, personal
`organizers and planners, address
`books, agendas, photo albums,
`calendars, stationery, paper
`folders, paper portfolios, book
`marks, postcards, stickers, gift
`wrapping paper, gifi boxes made
`of paper, gift boxes made of
`cardboard, tissue paper for
`packaging, shopping bags made
`of paper, and catalogs and
`newsletters in the fields of
`
`fashion, lifestyles and other topics
`of general interest namely culture,
`sports, modeling, cosmetics,
`music and entertainment;
`mounted and unmounted
`
`photographs and posters; and desk
`accessories comprising of pencil
`holders, pencil cases, erasers,
`pencils and pens, and pencil
`sharpeners.
`
`IC 024: Bed and bath linen,
`namely, bed covers, eiderdowns,
`duvets, duvet covers, bed
`
`blankets, bed sheets, bed quilts,
`dust ruffles and pillow cases,
`pillow shams, mattress covers,
`fitted toilet lid covers made of
`
`fabric, towels, and face cloths;
`table covers made of fabric, table
`cloths, table napkins, fabric place
`
`

`
`plastic, and cloth labels.
`
`mats, curtains, and draperies, all
`made of textile materials or of
`
`Opposer's above registrations are valid and subsisting, and Registration Nos. 1,460,988;
`
`1,727,740; 1,808,520; 2,030,406; 2,063,504; 2,159,029; 2,168,652; 2,213,511; 2,237,862;
`
`2,348,651; and 2,352,799 are incontestable and constitute conclusive evidence of Opposer's
`
`exclusive right to use the TH Flag Mark for the goods specified in those registrations. 15 U.S.C.
`
`§§ 1065 and 1115(b). The other registrations listed above constitute primafacie evidence of the
`
`validity of the marks covered by them and of Opposer's ownership of and exclusive right to use
`
`the TH Flag Mark for the listed goods. 15 U.S.C § l057(b).
`
`7.
`
`On February 2, 2007, Applicant filed an application for registration of the
`
`following mark ("Applicant's Mark"):
`
`
`
`for "pharmaceutical preparations, namely preparations for skin care and treatment, mouth and
`
`dental care, preparations for the treatment of gums, sensitive teeth, teething, caries and canker
`
`sores, dermatological preparations, gynecological preparations for the treatment of
`
`menopause/osteoporosis, mycosis and virical infections, antibiotics, analgesics, anti-
`
`inflammatory preparations and fungicides, preparations for allergy, hormone and osteoporosis
`
`treatment, medical plasters; in Class 5." Applicant filed its application pursuant to Section l(b)
`
`

`
`of the Trademark Act, based on its alleged bonafide intent to use the mark in commerce.
`
`Applicant's Mark was published for opposition on August 7, 2007.
`
`8.
`
`9.
`
`Applicant's Mark is virtually identical to Opposer's TH Flag Mark.
`
`The goods for which Applicant seeks to register Applicant's Mark are
`
`substantially related to the goods for which Opposer has registered and used its TH Flag Mark.
`
`10.
`
`On information and belief, Applicant's goods will be marketed through the same
`
`or very similar channels of trade and to the same class of consumers as the goods of Opposer.
`
`11.
`
`On information and belief, prospective purchasers of Applicant's goods are likely
`
`to erroneously assume that there is a lawful affiliation or connection between Opposer and
`
`Applicant, or between Opposer's goods and Applicant's goods.
`
`12.
`
`Applicant's application to register the Applicant's Mark is without Opposer's
`
`consent or permission and, on information and belief, is with full knowledge of Opposer's rights
`
`in its TH Flag Mark.
`
`13.
`
`On information and belief, neither Applicant nor any predecessor or related
`
`company of Applicant has a claim of right in the Applicant's Mark prior to February 2, 2007, the
`
`date on which Applicant filed the subject Application, Serial No. 77/098,056, based on its
`
`alleged bonafide intent—to-use the mark in commerce.
`
`14.
`
`Applicant's Mark so resembles Opposer's TH Flag Mark that, when used on or in
`
`conjunction with the goods of Applicant:
`
`3.)
`
`b)
`
`c)
`
`d)
`
`it is likely to cause confusion, or to cause mistake, or to deceive;
`
`it is likely to falsely suggest a connection with Opposer;
`
`is likely to damage Opposer's goodwill in its TH Flag Mark; and
`
`is likely to dilute the distinctive qualities of Opposer's TH Flag Mark.
`
`

`
`WHEREFORE, registration of Applicant's Mark for the goods described in Application
`
`Serial No. 77/098,056 will damage Opposer and its rights in the TH Flag Mark. Accordingly,
`
`Opposer prays that its Opposition to the registration of Application Serial No. 77/098,056 be
`
`sustained and the mark refused registration.
`
`Opposer herein submits the requisite filing fee in the amount of $300. Please debit any
`
`deficiency or credit any overpayment to, Deposit Account No. 16-0650. Please address all
`
`correspondence to Robert W. Sacoff, Pattishall, McAuliffe, Newbury, Hilliard & Geraldson
`
`LLP, 311 South Wacker Drive, Suite 5000, Chicago, Illinois 60606.
`
`Dated: September 5, 2007
`
`Respectfiilly submitted,
`
`PATTISHALL, MCAULIFFE, NEWBURY,
`HILLIARD & GERALDSON LLP
`
`By:
`Robert W. Sacoff
`
`J. Michael Monahan
`
`31 1 South Wacker Drive
`
`Suite 5000
`
`Chicago, Illinois 60606
`(312) 554-8000
`
`Attorneysfor Opposer, Tommy Hilfiger
`Licensing LLC
`
`-10-
`
`

`
`CERTIFICATE OF ELECTRONIC TRANSMISSION
`
`I hereby certify that this Notice of Opposition is being electronically transmitted to the
`
`Patent and Trademark Office on September 5, 2007.
`
`$4-47%“). §fig
`
`-11-