Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA380376
`ESTTA Tracking number:
`11/24/2010
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`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`Notice of Opposition
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`Notice is hereby given that the following party opposes registration of the indicated application.
`Opposer Information
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`Citizenship
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`UNITED STATES
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`Name
`Entity
`Address
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`Jose A Lugo
`Individual
`20 Snyder Avenue
`Brooklyn, NY 11226
`UNITED STATES
`
`Attorney
`information
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`Humberto Rubio, Jr.
`Rubio & Associates, P.A.
`8950 SW 74 Ct., # 1804
`Miami, FL 33156
`UNITED STATES
`hrubio@rubiolegal.com
`Applicant Information
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`Application No
`Opposition Filing
`Date
`Applicant
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`85056706
`11/24/2010
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`Publication date
`Opposition
`Period Ends
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`11/16/2010
`12/16/2010
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`Lugo's Hair
`150 East 44 St 26a
`New York, NY 10017
`UNITED STATES
`Goods/Services Affected by Opposition
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`Class 044. First Use: 2010/01/01 First Use In Commerce: 2010/01/01
`All goods and services in the class are opposed, namely: Hair replacement, hair addition, and hair
`extension services
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`Grounds for Opposition
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`Deceptiveness
`Priority and likelihood of confusion
`Torres v. Cantine Torresella S.r.l.Fraud
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`Trademark Act section 2(a)
`Trademark Act section 2(d)
`808 F.2d 46, 1 USPQ2d 1483 (Fed. Cir. 1986)
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`Marks Cited by Opposer as Basis for Opposition
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`U.S. Application
`No.
`Registration Date
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`85144506
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`NONE
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`Word Mark
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`LUGO'S
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`Application Date
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`10/04/2010
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`Foreign Priority
`Date
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`NONE
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`

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`Design Mark
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`Description of
`Mark
`Goods/Services
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`U.S. Application
`No.
`Registration Date
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`Word Mark
`Design Mark
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`NONE
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`Class 026. First use: First Use: 1976/06/13 First Use In Commerce: 1976/06/13
`Hair products and accessories, namely, wigs, hair pieces, add-on hair
`accessories constructed primarily of human hair, hair extensions, hair braids,
`hair weaves, hair ribbons and hair ornaments in the form of combs. Synthetic
`hair
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`85144524
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`Application Date
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`10/04/2010
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`NONE
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`Foreign Priority
`Date
`LUGO HAIR CENTER THE MECCA OF HAIR
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`NONE
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`Description of
`Mark
`Goods/Services
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`NONE
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`Class 026. First use: First Use: 1976/06/13 First Use In Commerce: 1976/06/13
`Hair products and accessories, namely, wigs, hair pieces, add-on hair
`accessories constructed primarily of human hair, hair extensions, hair braids,
`hair weaves, hair ribbons and hair ornaments in the form of combs. Synthetic
`hair
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`U.S. Application
`No.
`Registration Date
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`Word Mark
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`85144575
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`Application Date
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`10/04/2010
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`NONE
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`Foreign Priority
`Date
`LUGO HAIR CENTER THE MECCA OF HAIR
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`NONE
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`

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`Design Mark
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`Description of
`Mark
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`Goods/Services
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`The mark consists of a woman's head and face with somewhat wavy hair long
`enough to cover her neck and portion of her shoulder/back. She is facing north-
`east and has her head somewhat slanted towards her back. To the right of the
`woman's figure the words "Lugo Hair Center" and "The Mecca of Hair" appear.
`Class 026. First use: First Use: 1976/06/13 First Use In Commerce: 1976/06/13
`hair products and accessories, namely, wigs, hair pieces, add-on hair
`accessories constructed primarily of human hair, hair extensions, hair braids,
`hair weaves, hair ribbons and hair ornaments in the form of combs. Synthetic
`hair
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`U.S. Application
`No.
`Registration Date
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`85177151
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`NONE
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`Word Mark
`Design Mark
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`LUGO HAIR CENTER
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`Application Date
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`11/15/2010
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`Foreign Priority
`Date
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`NONE
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`Description of
`Mark
`Goods/Services
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`Related
`Proceedings
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`Attachments
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`NONE
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`Class 035. First use: First Use: 1976/06/13 First Use In Commerce: 1976/06/13
`Retail and distributorship services in the field of hair products and accessories
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`Opposition No. 91196840
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`85144506#TMSN.jpeg ( 1 page )( bytes )
`85144524#TMSN.jpeg ( 1 page )( bytes )
`85144575#TMSN.jpeg ( 1 page )( bytes )
`85177151#TMSN.jpeg ( 1 page )( bytes )
`Opposition Lugos 11-24-10.pdf ( 5 pages )(91725 bytes )
`Proof of Service 11-24-10.pdf ( 1 page )(53154 bytes )
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`The undersigned hereby certifies that a copy of this paper has been served upon all parties, at their address
`record by First Class Mail on this date.
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`Certificate of Service
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`Signature
`Name
`Date
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`/Humberto Rubio/
`Humberto Rubio, Jr.
`11/24/2010
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
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`In the matter of trademark application Serial No. 85056706
`For the mark: LUGO’S HAIR
`Published in the Official Gazette on: November 16, 2010
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`---------------------------------------------------)
`JOSE ANTONIO LUGO SR.
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`Opposer,
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`v.
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`LUGO’S HAIR
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`Applicant.
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`---------------------------------------------------)
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`NOTICE OF OPPOSITION
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`Opposition No. ________________
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`JOSE ANTONIO LUGO, SR., (hereinafter “Opposer”), an individual residing in New York,
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`with a principal address, 20 Snyder Avenue, Brooklyn, NY 11226 believes that it will be damaged by
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`registration of the mark shown in U.S. Application Serial No. 85056706 filed by LUGO’S HAIR
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`(hereinafter “Applicant”), on June 7, 2010. The application was published in the Official Gazette on
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`November 16, 2010. Pursuant to 15 U.S.C. §1063, by and through undersigned counsel, Opposer
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`opposes the registration of this mark and as grounds alleges:
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`1.
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`Opposer, Jose Antonio Lugo, Sr., is an individual residing in New York, NY. For many
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`years Opposer, its related companies and licensees (hereinafter “Related Companies”) have used the
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`trademarks LUGO’S, LUGO HAIR CENTER THE MECCA OF HAIR, LUGO HAIR CENTER
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`THE MECCA OF HAIR and DESIGN and LUGO HAIR CENTER (hereinafter “Opposer’s Marks”)
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`in commerce in connection with hair products and related goods and services.
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`2.
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`Many years prior to the filing of U.S. Application Serial No. 85056706, which is the
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`subject of this opposition, Opposer adopted and began using LUGO’S, LUGO HAIR CENTER and
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`Opposer’s Marks in commerce.
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`1
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`3.
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`Opposer and Related Companies are and have been engaged in the sale and marketing
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`of highly related goods and services to those recited by the Applicant in its application since a time
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`prior to any date of use by the Applicant.
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`4.
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`Opposer and Related Companies are and have been engaged in the sale and marketing
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`of hair products and accessories, namely, wigs, hair pieces, add-on hair accessories constructed
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`primarily of human hair, hair extensions, hair braids, hair weaves, hair ribbons and hair ornaments in
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`the form of combs in international class 026 under Opposer’s Marks. Opposer and Related
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`Companies have also been engaged in the retail and distributorship services in the field of hair
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`products and accessories in international class 035.
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`5.
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`Opposer is the owner of pending U.S. Application Serial No. 85144506 for “LUGO’S”,
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`pending U.S. Application Serial No. 85144524 for “Lugo Hair Center The Mecca of Hair” pending
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`U.S. Application Serial No. 85144575 for “Lugo Hair Center The Mecca of Hair” a stylized and/or
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`with design mark and pending U.S. Application Serial No. 85177151 for “Lugo Hair Center”
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`(collectively referred to as “Opposer’s Marks”).
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`6.
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` Opposer has used Opposer’s Marks in commerce and has acquired considerable and
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`valuable goodwill and recognition for its marks. By virtue of its longstanding use in commerce and
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`extensive advertising, Opposer’s Marks have become well-known in the relevant industry and the
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`public has come to associate Opposer’s Marks with Opposer’s hair products and related goods and
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`services.
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`7.
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`Furthermore, Opposer has a first date of use prior to Applicant’s alleged first use and
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`owns substantial use-based rights in and to Opposer’s Marks. Opposer’s first use in commerce dates
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`back to 1976.
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`8.
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`According to the U.S. Application Serial No. 85056706, Applicant is a New York
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`Corporation located in New York with address 150 East 44 Street, 26a, New York, NY 10017.
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`However, upon information and belief and pursuant to a brief review of the public records kept by
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`2
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`the Secretary of the Department of State of New York, Applicant does not seem to be an active New
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`York corporation.
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`9.
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`Applicant owns U.S. Application Serial No. 85056706 and seeks to register the mark
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`LUGO’S HAIR for international class 044 to distinguish hair replacement, hair addition, and hair
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`extension services.
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`10.
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`Upon information and belief, Applicant has been applying its confusingly identical
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`mark to similar goods and services, including hair products, hair services, hair retail and
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`distributorship services.
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`11.
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`Applicant’s mark, if not identical is confusingly similar to Opposer’s Marks and is
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`likely, when applied to the goods of the Applicant, to cause confusion, or to cause mistake or
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`deceive. 15 U.S.C. § 1052(d). Applicant’s mark makes a highly similar commercial impression to
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`Opposer’s Marks due to its identical sound and appearance. The overall commercial impression of
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`Applicant’s mark, when applied to the same or similar goods, would cause confusion or be likely to
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`cause confusion, mistake or deception.
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`12.
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`Additionally, upon information and belief, the intended customer markets for
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`Opposer’s and Related Companies’ products and Applicant’s are likely to overlap.
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`13.
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`Applicant is not entitled to use or register as a trademark LUGO’S HAIR for which it
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`seeks registration in its U.S. Application Serial No. 85056706, either prior to its Application or on
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`June 7, 2010, the date of filing of said application, or on November 16, 2010 the date of publication
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`thereof in the Official Gazette.
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`14.
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`Applicant is not the rightful owner of the above referenced application. At the time of
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`filing, Applicant was fully aware that Opposer was the rightful owner of Opposer’s Marks.
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`15.
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`Jose Lugo, a/k/a Jose Lugo, Jr. is the son of Opposer and a former employee of
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`Opposer and/or Related Companies.
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`3
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`16.
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`Upon information and belief, Applicant and or correspondent in the Application subject
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`of this dispute is intimately related (or one in the same) with Jose Lugo, a/k/a Jose Lugo, Jr.
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`17.
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`Upon information and belief, Applicant is intimately related (or is one in the same) to
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`the Applicant of the trademark LUGO’S Application Serial No. 85006767, which Application is also
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`the subject of an Opposition – Opposition No. 91196840 (for similar reasons and arguments). Such
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`Opposition is in default stage as Applicant failed to answer (a Motion for Default Judgment has been
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`filed).
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`18.
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`Applicant knowingly committed fraud in the declaration when filing the application
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`that is the subject of this opposition, by stating that it was entitled to use such mark in commerce.
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`19.
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`Opposer has been using Opposer’s Marks since 1976 (many years prior to Applicant’s
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`first use and to Applicant’s application that is the subject of this opposition) and Opposer’s Marks are
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`known among consumers and have acquired goodwill.
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`20.
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`If Applicant were permitted to register LUGO’S HAIR for the goods/services listed in
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`Applicant’s application, customers and relevant trade would likely be confused as to the source,
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`sponsorship, or affiliation of such goods and services, thereby causing damage and injury to Opposer.
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`Persons already familiar with Opposer’s products and services would be likely to be confused as to
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`whether Applicant’s goods and services are authorized or sponsored by Opposer and such confusion
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`in trade would result in damages to Opposer. Any defect, objection or fault on the part of Applicant
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`would likely also affect Opposer.
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`WHEREFORE, Opposer prays that the opposition be sustained and Applicant’s application be
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`refused and denied.
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`4
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`This Notice of Opposition is being filed electronically through the Electronic System for Trademark
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`Trials and Appeals on this 24th day of November, 2010 and the fee required is submitted
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`simultaneously therewith.
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`Opposer hereby designates the undersigned as applicant's representative upon whom notice or
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`process in the proceedings affecting this procedure may be served.
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`Respectfully submitted,
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`LAW FIRM OF RUBIO & ASSOCIATES, P.A.
`Attorneys for Opposer
`8950 SW 74 Ct., Suite 1804
`Miami, FL 33156
`Tel: (786) 220-2061
`Fax: (786) 220-2062
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` /Humberto Rubio/ .
`Humberto Rubio, Jr., Esq.
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`5
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`PROOF OF SERVICE
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`I hereby certify that on November 24th, 2010, I served the foregoing document described as
`Notice of Opposition on the interested party in the action at its last known address by placing a true
`and correct copy in a sealed envelope with postage thereon fully paid in the United States Mail, via
`Certified Mail as follows:
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`LUGO’S HAIR
`150 East 44 Street, 26a,
`New York, NY 10017
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`LAW FIRM OF RUBIO & ASSOCIATES, P.A.
`Attorneys for Opposer
`8950 SW 74 Ct., Suite 1804
`Miami, FL 33156
`Tel: (786) 220-2061
`Fax: (786) 220-2062
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` /Humberto Rubio/____
`Humberto Rubio, Jr., Esq.
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