Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA974834
`05/17/2019
`
`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.
`
`05/22/2019
`
`7 Times Square
`New York, NY 10036
`UNITED STATES
`
`Laura Popp-Rosenberg
`Fross Zelnick Lehrman & Zissu, P.C.
`151 W. 42nd Street, 17th Floor
`New York, NY 10036
`UNITED STATES
`lpopp-rosenberg@fzlz.com, mgoldstein@fzlz.com
`2128135900
`
`Applicant Information
`
`Application No
`
`87797485
`
`Publication date
`
`01/22/2019
`
`Opposition Filing
`Date
`
`Applicant
`
`05/17/2019
`
`TLCA Holding Limited
`P.O. Box 71148
`Jebel Ali Free Zone
`Dubai
`ARAB EMIRATES
`
`Opposition Peri-
`od Ends
`
`05/22/2019
`
`Goods/Services Affected by Opposition
`
`Class 044. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Beauty Salons; Hairdressing Salons; Health
`Spa Services; Manicuring; Massage
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`
`3488664
`
`Registration Date
`
`08/19/2008
`
`Application Date
`
`01/12/2006
`
`Foreign Priority
`Date
`
`NONE
`
`
`ESTTA974834
`05/17/2019
`
`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.
`
`05/22/2019
`
`7 Times Square
`New York, NY 10036
`UNITED STATES
`
`Laura Popp-Rosenberg
`Fross Zelnick Lehrman & Zissu, P.C.
`151 W. 42nd Street, 17th Floor
`New York, NY 10036
`UNITED STATES
`lpopp-rosenberg@fzlz.com, mgoldstein@fzlz.com
`2128135900
`
`Applicant Information
`
`Application No
`
`87797485
`
`Publication date
`
`01/22/2019
`
`Opposition Filing
`Date
`
`Applicant
`
`05/17/2019
`
`TLCA Holding Limited
`P.O. Box 71148
`Jebel Ali Free Zone
`Dubai
`ARAB EMIRATES
`
`Opposition Peri-
`od Ends
`
`05/22/2019
`
`Goods/Services Affected by Opposition
`
`Class 044. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Beauty Salons; Hairdressing Salons; Health
`Spa Services; Manicuring; Massage
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`
`3488664
`
`Registration Date
`
`08/19/2008
`
`Application Date
`
`01/12/2006
`
`Foreign Priority
`Date
`
`NONE
`
`
`
`Word Mark
`
`Design Mark
`
`LOFT
`
`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
`
`Word Mark
`
`LOFT
`
`Application Date
`
`01/12/2006
`
`Foreign Priority
`Date
`
`NONE
`
`
`
`Design Mark
`
`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 )) *
`
`U.S. Registration
`No.
`
`3434715
`
`Registration Date
`
`05/27/2008
`
`Word Mark
`
`Design Mark
`
`LOFT
`
`Application Date
`
`08/15/2007
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 026. First use: First Use: 1999/09/00 First Use In Commerce: 1999/09/00
`HAIR ACCESSORIES, NAMELY, SCRUNCHIES, BARRETTES AND CLIPS;
`PONYTAIL HOLDERS
`
`U.S. Registration
`No.
`
`3700020
`
`Registration Date
`
`10/20/2009
`
`Word Mark
`
`LOFT
`
`Application Date
`
`07/11/2008
`
`Foreign Priority
`Date
`
`NONE
`
`
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 036. First use: First Use: 2008/10/01 First Use In Commerce: 2008/10/01
`CREDIT CARD SERVICES
`
`U.S. Registration
`No.
`
`3852568
`
`Registration Date
`
`09/28/2010
`
`Application Date
`
`10/26/2009
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`ANN TAYLOR LOFT
`
`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 ] ; HEADWEAR; AND FOOTWEAR
`Class 035. First use: First Use: 1995/03/02 First Use In Commerce: 1995/03/02
`RETAIL STORE SERVICES IN THE FIELDS OF CLOTHING, FOOTWEAR,
`HANDBAGS, SMALL LEATHER ACCESSORIES [, AND TOILETRIES ]
`
`U.S. Registration
`No.
`
`3268087
`
`Registration Date
`
`07/24/2007
`
`Word Mark
`
`Design Mark
`
`LOFTBEACH
`
`Application Date
`
`07/07/2006
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`
`NONE
`
`
`
`Mark
`
`Goods/Services
`
`Class 009. First use: First Use: 2006/05/01 First Use In Commerce: 2006/05/01
`[ SUNGLASSES ]
`Class 018. First use: First Use: 2006/05/01 First Use In Commerce: 2006/05/01
`[ HANDBAGS, ] [ STRAW BAGS, ] TOTE BAGS[, SHOULDER BAGS, CRO-
`CHETED BAGS, MACRAME BAGS, ] [ HOBO BAGS, LINEN BAGS, BEADED
`BAGS ]
`Class 025. First use: First Use: 2006/05/01 First Use In Commerce: 2006/05/01
`CLOTHING, namely, DRESSES, SKIRTS, [ JACKETS, ] PANTS, [ JEANS, ]
`SHORTS, BLOUSES, SHIRTS, [ KNITTED TOPS, STRETCH TOPS, JERSEY
`TOPS, HOODED ] SWEATSHIRTS, [ CROCHETED TOPS, CAMISOLES, HAL-
`TER TOPS, SLEEVELESS TOPS, TUNICS, PULLOVERS, SWEATERS, ] T-
`SHIRTS, BIKINI TOPS, [ TANK TOPS, ZIPPERED TOPS, ] SWIMWEAR, [
`BELTS, SASHES, ] SCARVES [, FOOTWEAR ]
`
`U.S. Registration
`No.
`
`4227493
`
`Registration Date
`
`10/16/2012
`
`Word Mark
`
`Design Mark
`
`LOVE LOFT
`
`Application Date
`
`10/11/2011
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`Attachments
`
`NONE
`
`Class 036. First use: First Use: 2010/10/01 First Use In Commerce: 2010/10/01
`credit card services
`
`78790275#TMSN.png( bytes )
`77540499#TMSN.png( bytes )
`78790622#TMSN.png( bytes )
`77256065#TMSN.png( bytes )
`77520371#TMSN.png( bytes )
`77857455#TMSN.png( bytes )
`78924858#TMSN.png( bytes )
`85444007#TMSN.png( bytes )
`F3057718.pdf(27159 bytes )
`
`Signature
`
`/Laura Popp-Rosenberg/
`
`Name
`
`Date
`
`Laura Popp-Rosenberg
`
`05/17/2019
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`ANNCO, INC.,
`
`
`
`
`Opposer,
`
`-against-
`
`
`TLCA HOLDING LIMITED,
`
`
`
`
`Applicant.
`
`
`
`
`
`
`
`
`
`Opposition No. ____________
`
`NOTICE OF OPPOSITION
`
`Annco, Inc. (“Opposer”) believes that it will be damaged by the issuance of a registration
`
`
`
`
`
`for the trademark applied for in Application Serial No. 87797485 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.
`
`{F3048425.1 }
`
`
`
`
`
`4.
`
`Since the time that the first 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 – including a LOFT retail store on the famous Fifth Avenue in New York
`
`City – along with the popular ecommerce site www.loft.com and the more recently launched
`
`www.loftoutlet.com e-commerce site.
`
`5.
`
`Opposer has extensively used and promoted its LOFT mark in connection with
`
`retail and online store services and a variety of clothing, beauty products, shoes, accessories,
`
`jewelry, bags, and related goods and services. Through this extensive promotion and use, and
`
`the success of Opposer’s offerings under the mark, Opposer has developed strong trademark
`
`rights and 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 and services of
`
`Opposer exclusively.
`
`7.
`
`Opposer owns numerous U.S. trademark registrations for the LOFT mark and
`
`LOFT-inclusive marks (collectively, “LOFT Marks”) 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
`
`{F3048425.1 }
`
`
`
`
`
`Reg’n No. Mark
`
`Reg’n Date
`
`Class and Goods/Services
`
`3703017
`
`LOFT
`
`Oct. 27, 2009
`
`3359615
`
`LOFT
`
`Dec. 25, 2007
`
`3434715
`
`LOFT
`
`May 27, 2008
`
`Class 9: sunglasses and sunglass
`cases
`
`Class 14: jewelry
`
`Class 18: handbags, shoulder bags,
`cosmetic cases sold empty, tote bags
`
`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
`
`Class 26: Hair accessories, namely,
`scrunchies, barrettes and clips;
`ponytail holders
`
`3700020
`
`LOFT
`
`Oct. 20, 2009
`
`Class 36: Credit card services
`
`3852568
`
`ANN TAYLOR
`LOFT
`
`Sept. 28, 2010
`
`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;
`headwear; and footwear
`
`Class 35: Retail stores services in
`the fields of clothing, footwear,
`handbags, small leather accessories
`
`3268087
`
`LOFTBEACH
`
`July 24, 2007
`
`Class 18: tote bags
`
`Class 25: clothing, namely, dresses,
`skirts, pants, shorts, blouses, shirts,
`sweatshirts, t-shirts, bikini tops,
`swimwear, scarves
`
`4227493
`
`LOVE LOFT
`
`Oct. 16, 2012
`
`Class 36: Credit card services
`
`
`
`B.
`
`Applicant and Its Application
`
`8.
`
`Upon information and belief and according to the online records of the United
`
`States Patent and Trademark Office (“USPTO”), applicant TLCA Holding Limited (“Applicant”)
`
`{F3048425.1 }
`
`
`
`
`
`is a United Arab Emirates limited liability company with an address of P.O. Box 71148, Jebel
`
`Ali Free Zone, Dubai, United Arab Emirates.
`
`9.
`
`Upon information and belief and according to the online records of the USPTO,
`
`on February 14, 2018, Applicant filed with the USPTO trademark application Serial No.
`
`87797485 (the “Application”) to register the mark shown below:
`
`
`
`(hereinafter, “Applicant’s Mark”) for “Beauty Salons; Hairdressing Salons; Health Spa Services;
`
`Manicuring; Massage” in International Class 44, based on an intent to use the mark under
`
`Section 1(b) of the Lanham Act, 15 U.S.C. § 1051(b).
`
`10.
`
`Applicant is not connected to Opposer in any way, and has not been authorized by
`
`Opposer to use Applicant’s Mark.
`
`11.
`
`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 Marks by virtue of
`
`Opposer’s federal registrations, pursuant to Section 22 of the Lanham Act, 15 U.S.C. § 1072.
`
`12.
`
`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 Marks as a result of Opposer’s extensive use and promotion of the LOFT Marks and the
`
`fame of the LOFT mark accruing from such use and promotion.
`
`13.
`
`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.
`
`{F3048425.1 }
`
`
`
`
`
`14.
`
`Applicant’s Mark is highly similar to Opposer’s LOFT Marks, both individually
`
`and collectively, in sight, sound, and commercial impression, including because Applicant’s
`
`Mark incorporates Opposer’s LOFT mark in its entirety. The similarity of the parties’ respective
`
`marks is increased by the fact that Opposer operates a LOFT store on Fifth Avenue
`
`15.
`
`The International Class 44 services identified in the Application are closely
`
`related to the goods and services offered by and registered to Opposer under the LOFT Marks.
`
`16.
`
`Based on the similarity of the parties’ marks, the similarity and/or identity of the
`
`Applicant’s International Class 44 goods and services to Opposer’s goods and services, the fame
`
`and strength of Opposer’s LOFT Marks, the breadth of goods and services upon which
`
`Opposer’s LOFT Marks have been used, and other factors, consumers are likely to be deceived
`
`into falsely believing that the International Class 44 goods and services 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 and services of
`
`Applicant and Opposer, all to Opposer’s injury and harm.
`
`17.
`
`Thus, registration of Applicant’s Mark in International Class 44 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 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).
`
`
`
`WHEREFORE, Opposer respectfully requests that this opposition be sustained and that
`
`registration of the mark in International Class 44 sought by Application Serial No. 87797485 be
`
`denied.
`
`
`
`{F3048425.1 }
`
`
`
`
`
`
`
`
`
`Fross Zelnick Lehrman & Zissu, P.C.
`
`
`/Laura Popp-Rosenberg/
`By:
` Laura Popp-Rosenberg
` Melissa Goldstein
`4 Times Square, 17th Floor
`New York, NY 10036
`Phone: (212) 813-5900
`Email: lpopp-rosenberg@fzlz.com
` mgoldstein@fzlz.com
`
`Attorneys for Opposer Annco, Inc.
`
`
`Dated: New York, New York
`
`May 17, 2019
`
`
`
`
`
`
`
`
`
`
`
`
`{F3048425.1 }
`
`
`
`
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