Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA985011
`07/02/2019
`
`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
`
`Motherly, Inc.
`
`07/03/2019
`
`Post Office Box 773
`Menlo Park, CA 94025
`UNITED STATES
`
`Michael J. Bevilacqua, Esquire
`Wilmer Cutler Pickering Hale and Dorr LLP
`60 State Street
`Boston, MA 02109
`UNITED STATES
`michael.bevilacqua@wilmerhale.com, WHIPtrademark@wilmerhale.com, bar-
`bara.barakat@wilmerhale.com
`617-526-6448
`
`Applicant Information
`
`Application No
`
`88069857
`
`Publication date
`
`03/05/2019
`
`Opposition Filing
`Date
`
`Applicant
`
`07/02/2019
`
`Opposition Peri-
`od Ends
`
`07/03/2019
`
`HUG & SLEEP, LLC
`6248 DAWSON BLVD
`NORCROSS, GA 30093
`UNITED STATES
`
`Goods/Services Affected by Opposition
`
`Class 020. First Use: 2018/04/20 First Use In Commerce: 2018/04/20
`All goods and services in the class are opposed, namely: Beds, mattresses, pillows and bolsters
`
`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.
`
`4925854
`
`Registration Date
`
`03/29/2016
`
`Word Mark
`
`MOTHERLY
`
`Application Date
`
`05/18/2015
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 041. First use: First Use: 2015/05/10 First Use In Commerce: 2015/05/10
`Providing a website featuring information, advice, and commentary in the field-
`sof parenting relating to the entertainment and education of children, entertain-
`ment, human culture, recreation, exercise and fitness, Providing a website fea-
`turing blogs, non-downloadable articles, photographs, and videos relating to
`family, relationships, children, parenting, care giving, beauty, fashion, employ-
`ment,career, volunteering, culture, entertainment, recreation, fitness, exercise,
`health, sexuality, wellness, food, and nutrition
`Class 045. First use: First Use: 2015/05/10 First Use In Commerce: 2015/05/10
`Providing a website featuring information, advice, and commentary relating to in-
`terfamily relationships, personalrelationships, parenting relating to interfamily re-
`lationships, personal care assistance of activities of daily living, such as bathing,
`grooming and personal mobility for mentally or physically challenged people,
`fashion, lifestyle related to sexuality; Providing social networking services via a
`website in the fields of family, relationships, children, parenting,care giving,
`beauty, fashion, employment, career, volunteering, culture, entertainment, recre-
`ation, fitness, exercise, health, sexuality, wellness, food and nutrition
`
`U.S. Application
`No.
`
`87647708
`
`Application Date
`
`10/16/2017
`
`Registration Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`MOTHERLY
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 010. First use: First Use: 0 First Use In Commerce: 0
`Pillows used for cradling, supporting, propping and feeding babies for medical or
`therapeutic purposes
`Class 020. First use: First Use: 0 First Use In Commerce: 0
`Pillows; pillows used for cradling, supporting, propping and feeding babies notfor
`
`

`

`medical or therapeutic purposes; portable baby bath seats; baby bouncer seats;
`high chairs for babies; bassinets; portable cradles; baby beds; rocking chairs;
`cushions; mats for playpens; baby walkers; furniture
`Class 024. First use: First Use: 0 First Use In Commerce: 0
`Baby blankets; baby comfort blankets; baby comfort blankets with attached
`teething ring, pacifier and/or plush toy; nursing covers; baby bedding, namely,
`bundle bags, swaddling blankets, crib bumpers, fitted crib sheets, crib skirts, crib
`blankets, and diaper changing pad coversnot of paper
`Class 025. First use: First Use: 0 First Use In Commerce: 0
`Baby clothing, namely, tops, bottoms, jackets, vests, dresses, skirts, coveralls,
`bodysuits, pajamas, socks, hosiery, headwear and footwear; infant wear; baby
`layettes for clothing
`Class 028. First use: First Use: 0 First Use In Commerce: 0
`Baby swings; baby rattles; baby multiple activity toys; plush toys; plush toys with
`attached comfort blanket, rattle and/or teething ring; bath toys; crib toys; play
`mats containing infant toys; toy vehicles; yoga blankets
`
`Trademark Opposition No. 91248451
`
`86632919#TMSN.png( bytes )
`87647708#TMSN.png( bytes )
`notice of opposition hug sleep motherly sleep USA design 88069857.pdf(86586
`bytes )
`
`Related Proceed-
`ings
`
`Attachments
`
`Signature
`
`/barbara a. barakat/
`
`Name
`
`Date
`
`Barbara A. Barakat
`
`07/02/2019
`
`

`

`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the matter of Application Serial No. 88069857
`
`Published in the Official Gazette at TM 2535 on March 5, 2019
`
`Motherly, Inc.,
`
`Opposer
`
`v.
`
`
`
`
`
`
`
`
`
`HUG & SLEEP, LLC,
`
`__________________________________________
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`
`
`
`Applicant
`__________________________________________)
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Opposition No.
`
`BOX TTAB/FEE
`Commissioner for Trademarks
`P.O. Box 1451
`Alexandria, Virginia 22313-1451
`
`NOTICE OF OPPOSITION
`
`Motherly, Inc., a corporation organized and existing under the laws of Delaware, located
`
`and doing business at Post Office Box 773, Menlo Park, California 94025 (hereinafter
`
`“Opposer”), believes that it will be damaged by the registration of the trademark “hug & sleep
`
`motherly sleep USA and design” for “beds, mattresses, pillows and bolsters” as shown in
`
`Application Serial No. 88069857, filed August 8, 2018, by HUG & SLEEP, LLC (hereinafter
`
`“Applicant”), and hereby opposes the same.
`
`As grounds for opposition, it is alleged that:
`
`1.
`
`Applicant seeks registration of the mark “hug & sleep motherly sleep USA and
`
`design” for use with beds, mattresses, pillows and bolsters (“Applicant’s Mark”), as evidenced
`
`by the publication of said trademark in the March 5, 2019 issue of the Official Gazette.
`
`
`ActiveUS 174515846v.1
`
`

`

`
`
`2.
`
`Opposer is now, and has been for some time, engaged in providing products and
`
`services for mothers. Opposer’s services include a variety of digital informational services, and
`
`Opposer’s products are directed to mothers of newborn babies and mothers to be.
`
`3.
`
`At least as early as May 10, 2015, Opposer began providing a website featuring
`
`information, advice, and commentary in the fields of parenting relating to the entertainment and
`
`education of children, entertainment, human culture, recreation, exercise and fitness, featuring
`
`blogs, non-downloadable articles, photographs, and videos relating to family, relationships,
`
`children, parenting, care giving, beauty, fashion, employment, career, volunteering, culture,
`
`entertainment, recreation, fitness, exercise, health, sexuality, wellness, food, and nutrition,
`
`featuring information, advice, and commentary relating to interfamily relationships, personal
`
`relationships, parenting relating to interfamily relationships, personal care assistance of activities
`
`of daily living, such as bathing, grooming and personal mobility for mentally or physically
`
`challenged people, fashion, lifestyle related to sexuality and providing related social networking
`
`services via the website.
`
`4.
`
`Opposer is the owner of:
`
`United States Trademark Registration No. 4925854, filed May 18, 2015, for the mark
`
`MOTHERLY, issued March 29, 2016, for providing a website featuring information, advice, and
`
`commentary in the fields of parenting relating to the entertainment and education of children,
`
`entertainment, human culture, recreation, exercise and fitness, Providing a website featuring
`
`blogs, non-downloadable articles, photographs, and videos relating to family, relationships,
`
`children, parenting, care giving, beauty, fashion, employment, career, volunteering, culture,
`
`entertainment, recreation, fitness, exercise, health, sexuality, wellness, food, and nutrition, in
`
`class 41 and providing a website featuring information, advice, and commentary relating to
`
`
`ActiveUS 174515846v.1
`
`- 2 -
`
`

`

`
`
`interfamily relationships, personal relationships, parenting relating to interfamily relationships,
`
`personal care assistance of activities of daily living, such as bathing, grooming and personal
`
`mobility for mentally or physically challenged people, fashion, lifestyle related to sexuality;
`
`Providing social networking services via a website in the fields of family, relationships, children,
`
`parenting, care giving, beauty, fashion, employment, career, volunteering, culture, entertainment,
`
`recreation, fitness, exercise, health, sexuality, wellness, food and nutrition, in class 45; and
`
`United States Trademark Application Serial No. 87647708, filed October 16, 2017, for
`
`the mark MOTHERLY, for pillows used for cradling, supporting, propping and feeding babies
`
`for medical or therapeutic purposes, in class 10; pillows; pillows used for cradling, supporting,
`
`propping and feeding babies not for medical or therapeutic purposes; portable baby bath seats;
`
`baby bouncer seats; high chairs for babies; bassinets; portable cradles; baby beds; rocking chairs;
`
`cushions; mats for playpens; baby walkers; furniture, in class 20; baby blankets; baby comfort
`
`blankets; baby comfort blankets with attached teething ring, pacifier and/or plush toy; nursing
`
`covers; baby bedding, namely, bundle bags, swaddling blankets, crib bumpers, fitted crib sheets,
`
`crib skirts, crib blankets, and diaper changing pad covers not of paper, in class 24; baby clothing,
`
`namely, tops, bottoms, jackets, vests, dresses, skirts, coveralls, bodysuits, pajamas, socks,
`
`hosiery, headwear and footwear; infant wear; baby layettes for clothing, in class 25; and baby
`
`swings; baby rattles; baby multiple activity toys; plush toys; plush toys with attached comfort
`
`blanket, rattle and/or teething ring; bath toys; crib toys; play mats containing infant toys; toy
`
`vehicles; yoga blankets, in class 28 (hereinafter “Opposer’s Mark”).
`
`5.
`
`Opposer’s Mark is symbolic of the extensive goodwill and recognition built up by
`
`Opposer through continuous use of said mark.
`
`
`ActiveUS 174515846v.1
`
`- 3 -
`
`

`

`
`
`6.
`
`Opposer has expended, and will be expending, substantial time, money and
`
`resources marketing, advertising, and promoting Opposer’s Mark and the goods and services
`
`provided under such mark, with the result that the purchasing public has come to know, rely
`
`upon, and recognize Opposer and its offerings by such mark. Opposer has exceedingly valuable
`
`goodwill established in Opposer’s Mark.
`
`7.
`
`Application Serial No. 88069857 for registration of the mark “hug & sleep
`
`motherly sleep USA and design” was filed on August 8, 2018, based upon Applicant’s claimed
`
`use of said mark from April 20, 2018. Opposer’s U.S. Registration No. 4925854 issued on
`
`March 29, 2016 from an application filed on May 18, 2015, both dates well before the
`
`Applicant’s filing date for its application. Opposer actually began using its MOTHERLY mark
`
`in connection with its information services more than 3 years prior to the filing date of
`
`Applicant’s application. United States Trademark Application Serial No. 87647708 was filed on
`
`October 16, 2017, which is a date before the Applicant’s filing date and before Applicant’s date
`
`of first use claimed in Applicant’s application. Thus, Opposer’s Mark has priority over
`
`Applicant’s Mark because Opposer’s use, filing dates and registration date of U.S. Registration
`
`No. 4925854, and the filing date of United States Trademark Application Serial No. 87647708
`
`predate the Applicant’s filing date or any other date on which the Applicant may rely for
`
`purposes of priority.
`
`8.
`
`Opposer’s Mark “MOTHERLY” and Applicant’s Mark “hug & sleep motherly
`
`sleep USA and design” are confusingly similar, as the Applicant’s Mark completely incorporates
`
`Opposer’s Mark.
`
`9.
`
`Applicant’s Mark is confusingly similar to Opposer’s Mark as they are similar in
`
`appearance, sound and commercial impression, particularly as Applicant’s Mark is being used
`
`
`ActiveUS 174515846v.1
`
`- 4 -
`
`

`

`
`
`with beds, mattresses, pillows and bolsters, products listed in, or highly similar to the products
`
`listed in, United States Trademark Application Serial No. 87647708 for Opposer’s mark.
`
`10.
`
`The goods and services which are identified in Opposer’s Registration No.
`
`4925854 and Opposer’s United States Trademark Application Serial No. 87647708 for
`
`Opposer’s Mark are closely related to the goods identified in the Applicant’s application No.
`
`88069857 to register “hug & sleep motherly sleep USA and design,” and on information and
`
`belief, will be marketed through the same or similar channels of trade or to the same or similar
`
`class of consumers.
`
`11.
`
`By reason of Opposer’s extensive use of the “MOTHERLY” mark, the public will
`
`believe that the Applicant’s use of its mark “hug & sleep motherly sleep USA and design” is
`
`sponsored, endorsed or approved by, or affiliated with, Opposer and that the quality of the goods
`
`bearing the Applicant’s Mark has been approved and/or maintained by Opposer.
`
`12.
`
`In view of these similarities, Applicant’s use of the mark “hug & sleep motherly
`
`USA and design” is likely to cause confusion, mistake, or deception with respect to Opposer’s
`
`Mark “MOTHERLY,” and to damage the goodwill represented and symbolized by the Opposer’s
`
`Mark.
`
`13.
`
`Based on the foregoing, Applicant’s registration of the mark “hug & sleep
`
`motherly sleep USA and design” on the Principal Register of the United States Patent and
`
`Trademark Office would clearly cause injury and damage to the Opposer.
`
`
`ActiveUS 174515846v.1
`
`- 5 -
`
`

`

`
`
`WHEREFORE, Opposer prays that this opposition be sustained and that registration of
`
`Applicant’s Mark “hug & sleep motherly USA and design” as shown in Application Serial No.
`
`88069857 be refused.
`
`Respectfully submitted,
`
`Motherly, Inc.
`
`/barbara a. barakat /
`_________________________________
`Michael J. Bevilacqua
`Reg. No. 31,091
`Barbara A. Barakat
`Reg. No. 32,190
`Attorneys for Opposer
`
`Wilmer Cutler Pickering Hale and Dorr LLP
`60 State Street
`Boston, Massachusetts 02109
`(617) 526-6154
`July 2, 2019
`
`
`
`
`
`
`
`
`ActiveUS 174515846v.1
`
`- 6 -
`
`