`ESTTA396627
`ESTTA Tracking number:
`03/07/2011
`
`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
`
`Stussy, Inc.
`Corporation
`17426 Daimler Street
`Irvine, CA 92614
`UNITED STATES
`
`Citizenship
`
`California
`
`Attorney
`information
`
`John R. Sommer
`John R. Sommer, Attorney-at-Law
`17426 Daimler Street
`Irvine, CA 92614
`UNITED STATES
`sommer@stussy.com Phone:949 752 5344
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`77959539
`03/07/2011
`
`Publication date
`Opposition
`Period Ends
`
`02/08/2011
`03/10/2011
`
`Blue Niagra
`1413 Kensington Ct.
`Southlake, TX 76092
`UNITED STATES
`Goods/Services Affected by Opposition
`
`Class 025.
`All goods and services in the class are opposed, namely: Shoes
`
`Grounds for Opposition
`
`Deceptiveness
`False suggestion of a connection
`Priority and likelihood of confusion
`Dilution
`
`Trademark Act section 2(a)
`Trademark Act section 2(a)
`Trademark Act section 2(d)
`Trademark Act section 43(c)
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`Registration Date
`
`2225736
`
`02/23/1999
`
`Word Mark
`
`SS
`
`Application Date
`
`01/06/1998
`
`Foreign Priority
`Date
`
`NONE
`
`
`
`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 025. First use: First Use: 1992/01/00 First Use In Commerce: 1992/01/00
`clothing, namely, coats, dresses, jackets, jerseys, pants, shirts, shorts, skirts,
`sweatshirts, sweatpants, swimsuits, t-shirts, tank tops, caps and hats
`
`U.S. Registration
`No.
`Registration Date
`
`3301183
`
`10/02/2007
`
`Word Mark
`Design Mark
`
`SS
`
`Application Date
`
`12/22/2006
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 035. First use: First Use: 1992/12/31 First Use In Commerce: 1992/12/31
`Retail store services featuring bags, belts, cigarette lighters, clothing, decals,
`flashlights, footwear, headwear, jewelry, key chains, luggage, money clips,
`backpacks, posters, prerecorded compact discs, purses, signs, stickers,
`sunglasses, sunglasses cases, towels, umbrellas, wallets, watches; retail store
`services featuring general merchandise
`
`U.S. Registration
`No.
`Registration Date
`
`3618692
`
`05/12/2009
`
`Word Mark
`
`SS
`
`Application Date
`
`08/06/2008
`
`Foreign Priority
`Date
`
`NONE
`
`
`
`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 2008/02/28 First Use In Commerce: 2008/02/28
`Cell phone cases; compact disk storage wallets; computer bags; computer
`carrying cases; directional compasses; magnets; personal data assistant cases;
`portable music player cases; sunglasses; cases for sunglasses and eyeglasses;
`prerecorded video discs featuring fashion, music, athletic performances and
`travel; cell phone pouches; personal data assistant (PDAs) pouches; personal
`music player pouches
`Class 018. First use: First Use: 2006/02/28 First Use In Commerce: 2006/02/28
`All purpose shopping bags made of textile; attaché cases; backpacks; beach
`bags; book bags; briefcases; briefcase type portfolios; business card cases;
`business cases; carrying cases; credit card cases; clutch bags; draw string
`pouches; duffel bags; fanny packs; garment bags for travel; hand bags; leather
`and imitation leather bags; leather key cases; leather key chains; leather key
`holders; luggage; messenger bags; purses; rucksacks; shoulder bags; sports
`bags; suit cases; tote bags; traveling bags; vanity cases sold empty; waist
`packs; wallets; umbrellas
`Class 025. First use: First Use: 1998/12/31 First Use In Commerce: 1998/12/31
`Clothing, namely, bathing suits; beach cover ups; belts; board shorts; coats;
`dresses; jackets; jerseys; pajamas; pants; polo shirts; rainwear; scarves; shirts;
`shorts; skirts; socks; suits; sweat pants; sweat shirts; sweaters; sweatbands;
`swim suits; t-shirts; tank tops; vests; underwear; wind-resistant jackets;
`wristbands; footwear; headgear, namely, berets, caps, hats, scarves
`
`Attachments
`
`75414165#TMSN.gif ( 1 page )( bytes )
`77070061#TMSN.jpeg ( 1 page )( bytes )
`77539979#TMSN.jpeg ( 1 page )( bytes )
`Stussy-v-BlueNiagra.Opposition.pdf ( 5 pages )(192282 bytes )
`
`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.
`
`Certificate of Service
`
`Signature
`Name
`Date
`
`/John R. Sommer/
`John R. Sommer
`03/07/2011
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`-.
`In the matter of Application Serial No. 77/959539 .
`Published for Opposition in the OFFICIAL GAZETTE of February 8, 2011
`
`STUS SY, INC.,
`Opposer,
`
`v.
`
`BLUE NIAGRA,
`
`Applicant.
`
`Opposition No.:
`
`:
`
`NOTICE OF OPPOSITION
`
`Stussy, Inc. (“Opp_oser”), a California corporation having itsprincipal place of business at
`
`17426 Daimler Street, Irvine, California 92614, believes it will be damaged by registration of the
`
`device mark SS shown in Serial No. 77/959539 in International Class 25, filed by Blue Niagra
`
`(“Applicant”), and hereby opposes the same.
`
`As grounds for this Opposition, it is alleged:
`
`1.
`
`On or about March 15, 2010, Applicant filed an intent to use application with the
`
`United States Patent and Trademark Office to register the SS SCANDALOUS device mark
`
`(consisting of two back-to—-back interlocking letters “S”s and the word SCANDALOUS below
`
`that)(hereinafter “Applicant’s Mark”) for “Shoes” in International Class 25. The application for
`
`Applicant’s Mark was published in the Official Gazette on February 8, 2011. Opposer
`
`requested, and was granted a thirty day extension of time to oppose Applicant’s Mark. However,
`
`this opposition is timely even without such extension.
`
`
`
`
`
`2.
`
`Since at least as early as 1992, Opposer has been using the SS Link Mark
`
`Mark”) on _a
`(consisting of two back—to-back interlocking letter “S”s) (hereinafter “SS
`Variety of goods and services as listed on the registrations listed below, among others goods and
`
`services:
`
`SS in Circle
`
`Class
`
`Reg. No.
`
`Reg. Date
`
`Goods {artial list!
`
`25
`35
`
`2,225,736
`3,301,183
`
`02/23/9_9
`10/02/07
`
`Clothing, caps, hats
`Retail store services featuring clothing,
`footwear, headwear
`
`SS without Circle
`
`Class
`
`Reg. No.
`
`Reg. Date
`
`Goods
`
`artial list
`
`O9,18,25 3,618,692
`
`05/ 12/09
`
`Clothing, footwear, headgear
`
`3.
`
`Specifically, Opposer is the owner of U.S. Registrations listed above. The ‘736
`
`Registration is incontestable within the meaning of Section 15.
`
`4.
`
`There is no issue as to priority. Applicant’s priority date for his intent-to—use
`
`application is the filing date, March 15, 2010. 0pposer’s priority dates for the registrations are:
`
`Class 25: first use at least as early as January 1, 1992;
`
`Class 35: first use at least as early as December 31, 1992;
`
`SS without Circle in Class 25, first use at least as early as December 31,
`
`1998.
`
`Since long prior to Applicanfs filing of the application for Applicant’s Mark (no
`5.
`use of Applicant’s Mark having been alleged by Applicant so Applicant’s priority date is the
`
`filing date), Opposer has made substantial and continuous use of the SS Link Mark in interstate,
`
`
`
`
`
`foreign, and intrastate commerce on and in connection with the advertising, promotion, and sale
`
`of its goods, since as early as 1989.
`
`6.
`
`By Virtue of the aforesaid advertising, promotion, and sales, and by Virtue of the
`
`excellence of its products, Opposer’s SS Link Mark has come to represent exceedingly Valuable
`
`goodwill owned by Opposer.
`
`7.
`
`The goods on which Opposer uses its SS Link Mark and the goods for which
`
`Applicant seeks to register Applicant’s Mark are identical (specifically, Opposer’s goods are
`
`broader than Applicant’s goods). As to Opposer’s other goods, including clothing and headgear,
`
`Applicant’s goods are closely related. Opposer’s goods and Applicant’s goods are sold through
`
`the same channels of trade and to the same class of purchasers.
`
`8.
`
`Opposer’s SS Link Mark and Applicant’s Mark are confusingly and substantially
`
`similar.
`
`9.
`
`Use by Applicant of Applicant’s Mark will be likely to cause confusion, mistake,
`
`or deception with Opposer’s SS Link Mark, and result in the belief that Applicant or Applicant’s
`
`goods are in some way legitimately connected with, sponsored by, or approved by Opposer,
`
`resulting in damage and injury to Opposer. Persons familiar with Opposer’s SS Link Mark
`
`would be likely to buy Applicant’s goods as and for a product made and sold by Opposer. Any
`
`such confusion in trade inevitably would result in loss of sales to Opposer. Furthermore, any
`
`defect, objection, or fault found with Applicant’s products marketed under Applicant’s Mark
`
`would necessarily reflect upon and seriously injure the reputation that Opposer has established
`
`for its products merchandised under Opposer’s SS Link Mark.
`
`10.
`
`Applicant’s Mark, if registered, will be deceptive, in Violation of Section 2(a).
`
`
`
`ll.
`
`App1icant’s Mark, if registered, will disparage or falsely suggest a connection
`
`between Applicant and Opposer and their respective goods, in violation of Section 2(a).
`
`l2.
`
`Applicant’s Mark, if registered, will so resemble Opposer’s Marks registered on
`
`the Principal Register of the U.S. Patent & Trademark Office, and Opp0ser’s Marks in used in
`
`the United States and not abandoned, as to be likely, when used on or in connection with the
`
`goods of the Applicant, as to cause confusion, mistake or to deceive, in Violation of Section 2(d).
`
`13.
`
`ApplicaI1t’s Mark, if registered, will dilute the distinctiveness of 0pposer’s Mark
`
`in Violation of Section 43(0).
`
`14.
`
`Any use Applicant has made or may make of Applicant’s Mark, is and will be
`
`without Opposer’s consent or permission.
`
`WHEREFORE, registration by Applicant of the aforesaid Applicant’s Mark for the
`
`aforesaid goods will be damaging to Opposer, and Opposer therefore requests that the
`
`Opposition be sustained.
`
` John R. Sommer
`
`17426 Daimler Street
`
`Irvine, California 92614
`(949) 752-5344
`Fax: (949) 752-5439
`SOMMER@STUSSY.COM
`
`Attorneys for Petitioner
`Stussy, Inc.
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that, on the date of execution of this certificate, a true copy of the
`
`foregoing OPPOSITION was served by depositing same in the mail, first class postage prepaid,
`
`addressed to:
`
`Schwind, Nanci
`Blue Niagra
`1413 Kensington Ct
`Southlake, TX 76092-9511
`
`Courtesy copies by email to:
`nanci scI1wi.nd(cE)yah_oo.com and
`naiici a scandaIousdcsigns.com
`
`
`
`R. Sornmer
`
`Dated: March 7, 2011