Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA831399
`07/05/2017
`
`ESTTA Tracking number:
`
`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 ex-
`tension
`
`Address
`
`Attorney informa-
`tion
`
`Annco, Inc.
`
`07/05/2017
`
`7 Times Square
`New York, NY 10036
`UNITED STATES
`
`Laura Popp-Rosenberg
`Fross Zelnick Lerhman & Zissu, P.C.
`4 Times Square, 17th Floor
`New York, NY 10036
`UNITED STATES
`Email: lpopp-rosenberg@fzlz.com
`Phone: 2128135900
`
`Applicant Information
`
`Application No
`
`87126494
`
`Publication date
`
`03/07/2017
`
`Opposition Filing
`Date
`
`Applicant
`
`07/05/2017
`
`Lindsay Hall
`4331 Sexton Lane
`Dallas, TX 75229
`UNITED STATES
`
`Opposition Peri-
`od Ends
`
`07/05/2017
`
`Goods/Services Affected by Opposition
`
`Class 035. First Use: 2014/11/07 First Use In Commerce: 2014/11/07
`All goods and services in the class are opposed, namely: Online retail store services featuring cloth-
`ing, clothing related accessories, and gift boxes containing combinations of fashion accessories, sta-
`tionery, books, drinking apparatuses, and clothing
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`Dilution by blurring
`
`Dilution by tarnishment
`
`Trademark Act Sections 2 and 43(c)
`
`Trademark Act Sections 2 and 43(c)
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`
`3488664
`
`Application Date
`
`01/12/2006
`
`Registration Date
`
`08/19/2008
`
`Foreign Priority
`
`NONE
`
`
`ESTTA831399
`07/05/2017
`
`ESTTA Tracking number:
`
`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 ex-
`tension
`
`Address
`
`Attorney informa-
`tion
`
`Annco, Inc.
`
`07/05/2017
`
`7 Times Square
`New York, NY 10036
`UNITED STATES
`
`Laura Popp-Rosenberg
`Fross Zelnick Lerhman & Zissu, P.C.
`4 Times Square, 17th Floor
`New York, NY 10036
`UNITED STATES
`Email: lpopp-rosenberg@fzlz.com
`Phone: 2128135900
`
`Applicant Information
`
`Application No
`
`87126494
`
`Publication date
`
`03/07/2017
`
`Opposition Filing
`Date
`
`Applicant
`
`07/05/2017
`
`Lindsay Hall
`4331 Sexton Lane
`Dallas, TX 75229
`UNITED STATES
`
`Opposition Peri-
`od Ends
`
`07/05/2017
`
`Goods/Services Affected by Opposition
`
`Class 035. First Use: 2014/11/07 First Use In Commerce: 2014/11/07
`All goods and services in the class are opposed, namely: Online retail store services featuring cloth-
`ing, clothing related accessories, and gift boxes containing combinations of fashion accessories, sta-
`tionery, books, drinking apparatuses, and clothing
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`Dilution by blurring
`
`Dilution by tarnishment
`
`Trademark Act Sections 2 and 43(c)
`
`Trademark Act Sections 2 and 43(c)
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`
`3488664
`
`Application Date
`
`01/12/2006
`
`Registration Date
`
`08/19/2008
`
`Foreign Priority
`
`NONE
`
`
`
`Word Mark
`
`Design Mark
`
`LOFT
`
`Date
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 025. First use: First Use: 1995/03/02 First Use In Commerce: 1995/03/02
`CLOTHING, NAMELY, DRESSES, SKIRTS, SUITS, JEANS, SWEATERS,
`SHIRTS, T-SHIRTS, TANK TOPS, [ BODYSUITS, ] JUMPERS, VESTS,
`GLOVES, SLEEP WEAR, [ ROBES, ] SWIMSUITS, BLOUSES, PANTS,
`SHORTS, JACKETS, COATS, SOCKS, HOSIERY, BELTS, SCARVES, [ UN-
`DERWEAR; ] HEAD WEAR; AND FOOTWEAR
`
`U.S. Registration
`No.
`
`3703017
`
`Registration Date
`
`10/27/2009
`
`Word Mark
`
`Design Mark
`
`LOFT
`
`Application Date
`
`08/06/2008
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 1999/02/00 First Use In Commerce: 1999/02/00
`SUNGLASSES AND SUNGLASS CASES
`Class 014. First use: First Use: 1998/05/14 First Use In Commerce: 1998/05/31
`JEWELRY
`Class 018. First use: First Use: 1998/08/31 First Use In Commerce: 1998/08/31
`HANDBAGS, SHOULDER BAGS, [EVENING HANDBAGS,] COSMETIC
`CASES SOLD EMPTY, [WALLETS, CLUTCH PURSES,] TOTE BAGS[, UM-
`BRELLAS]
`
`U.S. Registration
`No.
`
`3359615
`
`Registration Date
`
`12/25/2007
`
`Application Date
`
`01/12/2006
`
`Foreign Priority
`Date
`
`NONE
`
`
`
`Word Mark
`
`Design Mark
`
`LOFT
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 035. First use: First Use: 1995/03/02 First Use In Commerce: 1995/03/02
`[ ON-LINE AND IN STORE RETAIL STORE SERVICES IN THE FIELDS OF
`CLOTHING, FOOTWEAR, HANDBAGS, SMALL LEATHER ACCESSORIES,
`TOILETRIES, CONSUMABLE BATH PRODUCTS ANDCOSMETIC
`PRODUCTS ] * ON-LINE AND IN STORE RETAIL STORE SERVICES IN THE
`FIELDS OF CLOTHING, FOOTWEAR, HANDBAGS; (( IN STORE RETAIL
`STORE SERVICES IN THE FIELD OF COSMETIC PRODUCTS )) *
`
`Attachments
`
`78790275#TMSN.png( bytes )
`77540499#TMSN.png( bytes )
`78790622#TMSN.png( bytes )
`F2298545.pdf(17687 bytes )
`
`Signature
`
`/Laura Popp-Rosenberg/
`
`Name
`
`Date
`
`Laura Popp-Rosenberg
`
`07/05/2017
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`ANNCO, INC.,
`
`
`
`
`
`LINDSAY HALL,
`
`
`
`
`Opposer,
`
`-against-
`
`Applicant.
`
`
`
`
`
`
`
`
`
`Opposition No. ____________
`
`
`Opposer Annco, Inc. (“Opposer”) believes that it will be damaged by the issuance of a
`
`
`
`NOTICE OF OPPOSITION
`
`
`
`registration for the trademark BEE’S KNEES LOFT as applied for by applicant Lindsay Hall
`
`(“Applicant”) in Application Serial No. 87126494 and therefore opposes the same. As grounds
`
`for this opposition, Opposer, by its counsel, Fross Zelnick Lehrman & Zissu, P.C., states as
`
`follows:
`
`A.
`
`Opposer and Opposer’s LOFT Mark
`
`FACTS
`
`1.
`
`Opposer is a Delaware corporation with its principal place of business at 7 Times
`
`Square, New York, New York 10036.
`
`2.
`
`Opposer, together with its related entities, is a leading national specialty retailer of
`
`women’s apparel, shoes, accessories, and related goods and services, sold primarily under the
`
`ANN TAYLOR and LOFT brands.
`
`3.
`
`Opposer’s rich heritage dates back to 1954, when the first ANN TAYLOR store
`
`opened in New Haven, Connecticut. The company’s LOFT brand was developed as an extension
`
`of the ANN TAYLOR brand in the 1990s.
`
`{F2298306.1 }
`
`
`
`
`
`4.
`
`Since the time that the first LOFT store opened in 1995, the LOFT brand has
`
`evolved into a nationally famous brand for women’s attire. Today, Opposer operates over 650
`
`LOFT retail and outlet stores along with an active ecommerce site, www.loft.com.
`
`5.
`
`Since 1995, Opposer has extensively used and promoted its LOFT mark in
`
`connection with a variety of clothing, shoes, accessories, jewelry, bags, retail and online store
`
`services, and related goods and services. Through this extensive promotion and use, and the
`
`success of Opposer’s offerings under the mark, Opposer has developed enormous goodwill in the
`
`LOFT mark.
`
`6.
`
`Long before any date upon which Applicant can rely, Opposer’s LOFT mark
`
`became uniquely identified with Opposer and came to identify the products of Opposer
`
`exclusively.
`
`7.
`
`Opposer owns numerous U.S. trademark registrations for the LOFT mark for a
`
`wide variety of goods and services, including but not limited to the following:
`
`Reg’n No. Mark
`
`Reg’n Date
`
`Class and Goods/Services
`
`3488664
`
`LOFT
`
`Aug. 19, 2008 Class 25: clothing, namely, dresses, skirts,
`suits, jeans, sweaters, shirts, t-shirts, tank tops,
`jumpers, vests, gloves, sleep wear, swimsuits,
`blouses, pants, shorts, jackets, coats, socks,
`hosiery, belts, scarves, head wear; and
`footwear
`
`3703017
`
`LOFT
`
`Oct. 27, 2009
`
`Class 9: sunglasses and sunglass cases
`
`Class 14: jewelry
`
`Class 18: handbags, shoulder bags, cosmetic
`cases sold empty, tote bags
`
`3359615
`
`LOFT
`
`Dec. 25, 2007 Class 35: on-line and in store retail store
`services in the fields of clothing, footwear,
`handbags; in store retail store services in the
`field of cosmetic products
`
`{F2298306.1 }
`
`
`
`
`
`The foregoing registrations are valid, subsisting and in full force and effect, and constitute
`
`evidence of the validity of the LOFT mark and of Opposer’s exclusive right to use the LOFT
`
`mark for the goods and services identified in the registrations. In addition, U.S. Registration No.
`
`3488664 has become incontestable under Section 15 of the Lanham Act, 15 U.S.C. § 1065, and
`
`U.S. Registration No. 3359615 has also become incontestable with respect to on-line and in store
`
`retail store services in the fields of clothing, footwear, and handbags.
`
`B.
`
`Applicant and Its Application
`
`8.
`
`According to the records of the USPTO, Applicant Lindsay Hall is an individual
`
`with an address of 4331 Sexton Lane, Dallas, Texas 75229.
`
`9.
`
`According to the records of the USPTO, on or about August 3, 2016, Applicant
`
`filed Application Serial No. 87126494 (the “Application”) to register the mark BEE’S KNEES
`
`LOFT (“Applicant’s Mark”).
`
`10.
`
`Applicant filed the Application on the basis of use in commerce under Section
`
`1(a) of the Lanham Act, 15 U.S.C. § 1051(a), for “Online retail store services featuring clothing,
`
`clothing related accessories, and gift boxes containing combinations of fashion accessories,
`
`stationery, books, drinking apparatuses, and clothing” in International Class 35, claiming first
`
`use and first use in commerce as of November 7, 2011.
`
`11.
`
`Applicant is not connected to Opposer in any way, and has not been authorized by
`
`Opposer to use Applicant’s Mark.
`
`12.
`
`At the time that Applicant filed the Application herein opposed, Applicant was on
`
`constructive notice of Opposer’s prior and exclusive rights in the LOFT mark by virtue of
`
`Opposer’s federal registrations, pursuant to Section 22 of the Lanham Act, 15 U.S.C. § 1072.
`
`{F2298306.1 }
`
`
`
`
`
`13.
`
`Upon information and belief, at the time that Applicant filed the Application
`
`herein opposed, Applicant had actual knowledge of Opposer’s prior and exclusive rights in the
`
`LOFT mark as a result of Opposer’s extensive use and promotion of the LOFT mark and the
`
`fame of the LOFT mark accruing from such use and promotion.
`
`COUNT 1:
`PRIORITY AND LIKELIHOOD OF CONFUSION
`
`Opposer incorporates by reference paragraphs 1 through 13 above as if fully set
`
`14.
`
`forth herein.
`
`15.
`
`Upon information and belief, Opposer’s rights in the LOFT mark in the United
`
`States pre-exist any date on which Applicant can rely for its claim of rights in Applicant’s Mark.
`
`16.
`
`Applicant’s Mark is highly similar to Opposer’s LOFT mark in sight, sound, and
`
`commercial impression, including because Applicant’s Mark incorporates Opposer’s LOFT mark
`
`in its entirety.
`
`17.
`
`The Class 35 services identified in the Application are identical or closely related
`
`to the goods and services offered by Opposer under the LOFT mark.
`
`18.
`
`Based on the similarity of the parties’ marks, the similarity and/or identity of the
`
`Applicant’s services to Opposer’s goods and services, the fame and strength of Opposer’s LOFT
`
`mark, the breadth of goods and services upon which Opposer’s LOFT mark has been used, and
`
`other factors, consumers are likely to be deceived into falsely believing that the goods offered by
`
`Applicant under Applicant’s Mark originate from or are otherwise associated with or endorsed
`
`by Opposer, or that there is some relationship between Applicant and Opposer or the goods of
`
`Applicant and Opposer, all to Opposer’s injury and harm.
`
`19.
`
`Thus, registration of Applicant’s Mark as applied for in the Application is likely
`
`to cause confusion, to cause mistake, or to deceive the public into the false belief that the goods
`
`{F2298306.1 }
`
`
`
`
`
`offered by Applicant under Applicant’s Mark come from or are otherwise sponsored by or
`
`connected with Opposer, in violation of Section 2(d) of the Lanham Act, 15 U.S.C. § 1052(d).
`
`COUNT 2:
`DILUTION
`
`20.
`
`Opposer incorporates by reference paragraphs 1 through 19 above as if fully set
`
`forth herein.
`
`21.
`
`Opposer’s LOFT mark is distinctive and famous, has been used in commerce and
`
`widely advertised throughout the United States, and is widely recognized by consumers as a
`
`symbol of Opposer and its goods and services.
`
`22.
`
`Opposer’s LOFT mark is and has been famous long prior to any date upon which
`
`Applicant can rely.
`
`23.
`
`Owing to the fame of Opposer’s LOFT mark, and the similarity between the
`
`LOFT mark and Applicant’s Mark, registration of Applicant’s Mark in Class 35 is likely to dilute
`
`the distinctive quality of Opposer’s LOFT mark by lessening the capacity of that mark to identify
`
`and distinguish exclusively the goods and services of Opposer, in violation of Section 2(f) of the
`
`Lanham Act, 15 U.S.C. § 1052(f).
`
`24.
`
`By reason of the foregoing, Opposer will be damaged by the registration of
`
`Applicant’s Mark.
`
`
`
`WHEREFORE, Opposer respectfully requests that this opposition be sustained and that
`
`registration of the mark in Class 35 sought by Application Serial No. 87126494 be denied.
`
`
`
`{F2298306.1 }
`
`
`
`
`
`
`
`Fross Zelnick Lehrman & Zissu, P.C.
`
`
`By: /Laura Popp-Rosenberg/
` Laura Popp-Rosenberg
`4 Times Square, 17th Floor
`New York, NY 10036
`Phone: (212) 813-5900
`Email: lpopp-rosenberg@fzlz.com
`
`Attorneys for Opposer Annco, Inc.
`
`
`Dated: New York, New York
`
`July 5, 2017
`
`
`
`
`
`
`
`
`
`
`
`
`{F2298306.1 }
`
`
`
`
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