Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA1052198
`04/29/2020
`
`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
`
`Eurostar, Inc.
`
`04/29/2020
`
`879 W. 190TH STREET, 12TH FL.
`GARDENA, CA 90248
`UNITED STATES
`
`MICHELLE A. COOKE
`MANATT, PHELPS & PHILLIPS, LLP
`2049 Century Park East, Suite 1700
`LOS ANGELES, CA 90067
`UNITED STATES
`mcooke@manatt.com, jwood@manatt.com, jburns@manatt.com, ipdock-
`et@manatt.com
`310-312-4208
`
`Applicant Information
`
`Application No
`
`88574126
`
`Publication date
`
`12/31/2019
`
`Opposition Filing
`Date
`
`Applicant
`
`04/29/2020
`
`Opposition Peri-
`od Ends
`
`04/29/2020
`
`MSC, WS LLC
`825 Eighth Ave., 33rd Floor
`New York, NY 100197475
`UNITED STATES
`
`Goods/Services Affected by Opposition
`
`Class 025. First Use: 0 First Use In Commerce: 0
`Opposed goods and services in the class: Clothing, namely, t-shirts, shirts, golf shirts, polo shirts,
`jackets, hats, baseball caps, golf caps, sweatshirts, sweaters, coats, vests, gloves, scarves, and ties
`as clothing
`
`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.
`
`5834402
`
`Application Date
`
`02/05/2019
`
`Registration Date
`
`08/13/2019
`
`Foreign Priority
`
`NONE
`
`
`ESTTA1052198
`04/29/2020
`
`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
`
`Eurostar, Inc.
`
`04/29/2020
`
`879 W. 190TH STREET, 12TH FL.
`GARDENA, CA 90248
`UNITED STATES
`
`MICHELLE A. COOKE
`MANATT, PHELPS & PHILLIPS, LLP
`2049 Century Park East, Suite 1700
`LOS ANGELES, CA 90067
`UNITED STATES
`mcooke@manatt.com, jwood@manatt.com, jburns@manatt.com, ipdock-
`et@manatt.com
`310-312-4208
`
`Applicant Information
`
`Application No
`
`88574126
`
`Publication date
`
`12/31/2019
`
`Opposition Filing
`Date
`
`Applicant
`
`04/29/2020
`
`Opposition Peri-
`od Ends
`
`04/29/2020
`
`MSC, WS LLC
`825 Eighth Ave., 33rd Floor
`New York, NY 100197475
`UNITED STATES
`
`Goods/Services Affected by Opposition
`
`Class 025. First Use: 0 First Use In Commerce: 0
`Opposed goods and services in the class: Clothing, namely, t-shirts, shirts, golf shirts, polo shirts,
`jackets, hats, baseball caps, golf caps, sweatshirts, sweaters, coats, vests, gloves, scarves, and ties
`as clothing
`
`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.
`
`5834402
`
`Application Date
`
`02/05/2019
`
`Registration Date
`
`08/13/2019
`
`Foreign Priority
`
`NONE
`
`
`
`Word Mark
`
`Design Mark
`
`WSS
`
`Date
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 2017/11/01 First Use In Commerce: 2017/11/01
`Downloadable software in the nature of a mobile application for consumers to
`receive coupons, offers, promotions, rebates, rewards, deals, and discounts;
`Downloadable software in the nature of a mobile application for consumers to
`participate in, track, use and receive points and rewards in a rewards and cus-
`tomer loyalty program; Downloadable software in the nature of a mobile applica-
`tion for consumers to participate in surveys, sweepstakes and contests; Down-
`loadable software in the nature of a mobile application for consumers to make
`online purchases of clothing, footwear, headgear and general merchandise;
`Downloadable software inthe nature of a mobile application to enable users to
`locate retail stores selling clothing, footwear, headgear and general merchand-
`ise
`
`U.S. Registration
`No.
`
`6018625
`
`Registration Date
`
`03/24/2020
`
`Word Mark
`
`Design Mark
`
`WSS
`
`Application Date
`
`08/29/2019
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 035. First use: First Use: 1998/04/00 First Use In Commerce: 1998/04/00
`Retail store services for clothing, headwear, footwear, and fashion accessories;
`Online retail store services for clothing, headwear, footwear, and fashion ac-
`cessories
`
`U.S. Registration
`No.
`
`4053796
`
`Application Date
`
`07/16/2010
`
`Registration Date
`
`11/08/2011
`
`Foreign Priority
`
`NONE
`
`
`
`Word Mark
`
`Design Mark
`
`WSS
`
`Date
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of concentric roundedtriangles with a white border between
`the two triangles and the letters "WSS" inside the inner triangle.
`
`Class 025. First use: First Use: 2010/04/02 First Use In Commerce: 2011/03/09
`[ Footwear and apparel, namely, shorts,pants, shirts, blouses, skirts, dresses,
`tanks, socks, jackets, knit tops, woven tops, sweaters, knit bottoms, jeans, uni-
`forms, jackets, casual and dress pants, hats, scarves, T-shirts, sweatshirts,
`pullovers, hooded sweatshirts ]
`Class 035. First use: First Use: 2010/04/02 First Use In Commerce: 2011/03/09
`Retail store services featuring footwear and apparel
`
`U.S. Registration
`No.
`
`5486612
`
`Registration Date
`
`06/05/2018
`
`Word Mark
`
`Design Mark
`
`WSS
`
`Application Date
`
`11/22/2017
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of concentric roundedtriangles with a border between the
`twotriangles and the letters "WSS" inside the inner triangle.
`
`Class 035. First use: First Use: 2010/06/30 First Use In Commerce: 2010/06/30
`Retail store services for headwear, footwear, and fashion accessories; Online
`retail store services for clothing, headwear, footwear, and fashion accessories
`
`
`
`U.S. Registration
`No.
`
`5834403
`
`Registration Date
`
`08/13/2019
`
`Word Mark
`
`Design Mark
`
`WSS
`
`Application Date
`
`02/05/2019
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of concentric roundedtriangles with a border between the
`twotriangles and the letters "WSS" inside the inner triangle.
`
`Class 009. First use: First Use: 2017/11/01 First Use In Commerce: 2017/11/01
`Downloadable software in the nature of a mobile application for consumers to
`receive coupons, offers, promotions, rebates, rewards, deals, and discounts;
`Downloadable software in the nature of a mobile application for consumers to
`participate in, track, use and receive points and rewards in a rewards and cus-
`tomer loyalty program; Downloadable software in the nature of a mobile applica-
`tion for consumers to participate in surveys, sweepstakes and contests; Down-
`loadable software in the nature of a mobile application for consumers to make
`online purchases of clothing, footwear, headgear and general merchandise;
`Downloadable software inthe nature of a mobile application to enable users to
`locate retail stores selling clothing, footwear, headgear and general merchand-
`ise
`
`U.S. Registration
`No.
`
`5545847
`
`Registration Date
`
`08/21/2018
`
`Word Mark
`
`Design Mark
`
`WSS CARES!
`
`Application Date
`
`01/23/2018
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`NONE
`
`Goods/Services
`
`Class 035. First use: First Use: 2017/12/19 First Use In Commerce: 2017/12/19
`
`
`
`Retail store services for headwear, footwear, and fashion accessories; Online
`retail store services for clothing, headwear, footwear, and fashion accessories
`
`U.S. Registration
`No.
`
`5554655
`
`Registration Date
`
`09/04/2018
`
`Word Mark
`
`Design Mark
`
`WSS CARES!
`
`Application Date
`
`01/23/2018
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 041. First use: First Use: 2017/12/19 First Use In Commerce: 2017/12/19
`Organizing and conducting community sporting and cultural events featuring a
`variety of activities, namely, artistic, athletic, sporting, musical, and cultura-
`levents, and games for children, families and individuals; Organizing and con-
`ducting civic events in the nature of personal appearances by athletes, musi-
`cians, government officials, and local community leaders; Entertainment ser-
`vices, namely, producing and providing cultural and arts events, presentation of
`live show performances, and live performances by a musical group or solo mu-
`sical performer
`
`U.S. Registration
`No.
`
`5554656
`
`Registration Date
`
`09/04/2018
`
`Word Mark
`
`WSS CARES!
`
`Application Date
`
`01/23/2018
`
`Foreign Priority
`Date
`
`NONE
`
`
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of concentric roundedtriangles with a border between the
`twotriangles and the letters "WSS" inside the inner triangle, and "CARES!" in a
`stylized font appearing below the rounded triangles with the top of the "C" super-
`imposed on the outer triangle.
`
`Class 041. First use: First Use: 2017/12/19 First Use In Commerce: 2017/12/19
`Organizing and conducting community sporting and cultural events featuring a
`variety of activities, namely, artistic, athletic, sporting, musical, and cultura-
`levents, and games for children, families and individuals; Organizing and con-
`ducting civic events in the nature of personal appearances by athletes, musi-
`cians, government officials, and local community leaders; Entertainment ser-
`vices, namely, producing and providing cultural and arts events, presentation of
`live show performances, and live performances by a musical group or solo mu-
`sical performer
`
`U.S. Registration
`No.
`
`5545850
`
`Registration Date
`
`08/21/2018
`
`Word Mark
`
`WSS CARES!
`
`Application Date
`
`01/23/2018
`
`Foreign Priority
`Date
`
`NONE
`
`
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of concentric roundedtriangles with a border between the
`twotriangles and the letters "WSS" inside the inner triangle, and "CARES!" in a
`stylized font appearing below the rounded triangles with the top of the "C" super-
`imposed on the outer triangle.
`
`Class 035. First use: First Use: 2017/12/19 First Use In Commerce: 2017/12/19
`Retail store services for headwear, footwear, and fashion accessories; Online
`retail store services for clothing, headwear, footwear, and fashion accessories
`
`U.S. Registration
`No.
`
`4282055
`
`Registration Date
`
`01/29/2013
`
`Application Date
`
`05/17/2012
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`WSS SHOES. STYLE. SELECTION.
`
`
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of concentric roundedtriangles with a white border between
`the two triangles and the letters "WSS" inside the inner triangle and "SHOES.
`STYLE. SELECTION." appearing below the rounded triangles.
`
`Class 035. First use: First Use: 2010/06/30 First Use In Commerce: 2010/06/30
`Retail store services in the field of clothing and shoes
`
`U.S. Registration
`No.
`
`5625589
`
`Registration Date
`
`12/11/2018
`
`Application Date
`
`11/22/2017
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`WSS SHOES. STYLE. SELECTION.
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of concentric roundedtriangles with a border between the
`twotriangles and the letters "WSS" inside the inner triangle, and "SHOES.
`STYLE. SELECTION." appearing below the rounded triangles.
`
`Class 035. First use: First Use: 2010/06/30 First Use In Commerce: 2010/06/30
`Retail store services for headwear, footwear, and fashion accessories; Online
`retail store services for clothing, headwear, footwear, and fashion accessories
`
`U.S. Registration
`No.
`
`5987868
`
`Registration Date
`
`02/18/2020
`
`Application Date
`
`02/05/2019
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`WSS SHOES. STYLE. SELECTION.
`
`
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of concentric roundedtriangles with a border between the
`twotriangles and the letters "WSS" inside the inner triangle and "SHOES.
`STYLE. SELECTION." appearing below the rounded triangles.
`
`Class 009. First use: First Use: 2017/11/01 First Use In Commerce: 2017/11/01
`Downloadable software in the nature of a mobile application for consumers to
`receive coupons, offers, promotions, rebates, rewards, deals, and discounts;
`Downloadable software in the nature of a mobile application for consumers to
`participate in, track, use and receive points and rewards in a rewards and cus-
`tomer loyalty program; Downloadable software in the nature of a mobile applica-
`tion for consumers to participate in surveys, sweepstakes and contests; Down-
`loadable software in the nature of a mobile application for consumers to make
`online purchases of clothing, footwear, headgear and general merchandise;
`Downloadable software inthe nature of a mobile application to enable users to
`locate retail stores selling clothing, footwear, headgear and general merchand-
`ise
`
`U.S. Registration
`No.
`
`2320586
`
`Registration Date
`
`02/22/2000
`
`Application Date
`
`07/15/1998
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`WSS WAREHOUSE SHOE SALE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 035. First use: First Use: 1998/04/00 First Use In Commerce: 1998/04/00
`RETAIL SHOE STORE SERVICES
`
`
`
`U.S. Application
`No.
`
`88598504
`
`Application Date
`
`08/29/2019
`
`Registration Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`WSS
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 025. First use: First Use: 0 First Use In Commerce: 0
`Shirts; T-shirts; Long-sleeved shirts; Short-sleeved shirts; Shorts; Sweat shorts;
`Pants; Sweat pants; Tops as clothing; Tank tops; Fleece tops; Jerseys; Sweat-
`shirts; Hoods; Hooded sweatshirts; Jumpsuits; Jackets; Pullovers; Track jack-
`ets;Socks; Footwear; Athletic footwear; Athletic shoes; Flip-flops for use as foot-
`wear; Slides as footwear; Headwear; Caps being headwear; Hats
`
`U.S. Application/ Registra-
`tion No.
`
`Registration Date
`
`Word Mark
`
`Goods/Services
`
`Application Date
`
`NONE
`
`NONE
`
`NONE
`
`WSS
`
`Socks, shirts, t-shirts, shorts, pants, sweat pants, tops, fleece tops,
`sweatshirts, hoods (clothing), hooded sweatshirts, sweatshorts, jack-
`ets, pullovers, track jackets, footwear, flip- flops for use as footwear,
`slides as footwear
`
`Attachments
`
`88290302#TMSN.png( bytes )
`88598550#TMSN.png( bytes )
`85086936#TMSN.png( bytes )
`87695495#TMSN.png( bytes )
`88290305#TMSN.png( bytes )
`87767021#TMSN.png( bytes )
`87767043#TMSN.png( bytes )
`87767076#TMSN.png( bytes )
`87767064#TMSN.png( bytes )
`85628658#TMSN.png( bytes )
`87695481#TMSN.png( bytes )
`88290314#TMSN.png( bytes )
`75519346#TMSN.png( bytes )
`88598504#TMSN.png( bytes )
`Notice of Opposition to WS Stylized 88574126 MSC 04292020.pdf(291466
`bytes )
`Exhibit 1 - WS Stylized MSC.pdf(543235 bytes )
`Exhibit 2 - WS Stylized MSC.pdf(62367 bytes )
`
`Signature
`
`/Michelle A. Cooke/
`
`
`
`Name
`
`Date
`
`MICHELLE A. COOKE
`
`04/29/2020
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE
`TRADEMARK TRIAL AND APPEAL BOARD
`
`In the matter of Application Serial No. 88/574,126
`Published in the Official Gazette of December 31, 2019
`
`
`
`
`
`
`
` EUROSTAR, INC.,
`
`Opposer,
`
` v.
`
` MSC, WS LLC,
`
`Applicant.
`
`Opposition No. ________________:
`
`Mark: WS (Stylized)
`
`
`
`88/574,126
`August 10, 2019
`
`
`Serial No.
`Filed:
`
`
`
`
`
`
`
`NOTICE OF OPPOSITION
`
`Opposer Eurostar, Inc. (“Eurostar” or “Opposer”) believes that it will be damaged by
`
`registration of the mark WS (Stylized) for the following goods and services identified in
`
`Application Serial No. 88/574,126 (“Opposed Application”): “Clothing, namely, t-shirts, shirts,
`
`golf shirts, polo shirts, jackets, hats, baseball caps, golf caps, sweatshirts, sweaters, coats, vests,
`
`gloves, scarves, and ties as clothing” (“Unqualified goods and services”). As grounds for
`
`opposition, Eurostar, upon actual knowledge with respect to itself and its own acts, and
`
`information and belief as to other matters, alleges as follows:
`
`1.
`
`Eurostar is a Delaware corporation with its principal place of business at 879 W.
`
`190th Street, 12th Floor, Gardena, California 90248.
`
`
`
`
`
`
`2.
`
`MSC, WS LLC (“MSC, WS” or “Applicant”) is, upon information and belief, a
`
`limited liability company organized in the State of Delaware with an address of 825 Eighth Ave.,
`
`33rd Floor, New York, New York 10019-7475.
`
`3.
`
`Applicant filed the Opposed Application with the U.S. Patent and Trademark
`
`Office (“USPTO”) on or about August 10, 2019 on the basis of intent to use under Section 1(b).
`
`4.
`
`The Opposed Application was published for opposition in the Official Gazette of
`
`December 31, 2019. On January 27, 2020, Opposer timely filed a 30-day request for extension
`
`of time to oppose the Opposed Application, which was granted by the Trademark Trial and
`
`Appeal Board (the “TTAB”) that same day. On February 28, 2020, Opposer timely filed a 60-
`
`day request for extension of time to oppose the Opposed Application for good cause shown,
`
`which was granted by the TTAB on that same day. Accordingly, Opposer has timely filed this
`
`Notice of Opposition prior to the expiration of the opposition period.
`
`Opposer and Its Marks
`
`5.
`
`Since its founding in 1984, Eurostar (or its predecessor(s) in interest) has owned
`
`and operated continuously to the present retail stores through which it sells its own and third
`
`party footwear and apparel directly to consumers.
`
`6.
`
`Originally, Eurostar’s retail stores were known under the brand WAREHOUSE
`
`SHOE SALE, and Eurostar subsequently migrated to using WSS as the main brand. The use in
`
`commerce of WSS as a trademark by Eurostar (or its predecessor(s) in interest) in connection
`
`with the retail sale of footwear and apparel started at least as early as April 1998 and continues
`
`through to the present. Over time, Eurostar has expanded its WSS trademark into a family of
`
`WSS-formative marks (collectively, the “WSS Marks”) for its retail and e-sale services, as well
`
`as for footwear and apparel.
`
`
`
`2
`
`
`
`7.
`
`Since its founding, Eurostar has been steadily increasing its retail footprint under
`
`the WSS Marks. There currently are 89 WSS branded retail stores spread throughout 4 U.S.
`
`states. The reach of the WSS brand for retail services for footwear and apparel, and for footwear
`
`and apparel itself, is national as a result of its e-commerce platforms located at <shopwss.com>
`
`(“WSS Website”) and its downloadable software app (“WSS App”), both of which have been in
`
`operation since launching on or about March 2011 and June 2017, respectively. Eurostar also
`
`maintains an active presence on other social media platforms such as Facebook, Twitter,
`
`Instagram and YouTube. Eurostar’s presence on the WSS Website, WSS App, and its social
`
`media platforms are all prominently branded with the WSS Marks.
`
`8.
`
`In addition to its retail services, Eurostar also designs, manufactures, and markets
`
`a broad range of footwear and apparel, including athletic items, which it markets and distributes
`
`nationwide under several different brands including, but not limited to, the WSS Marks.
`
`Eurostar used in commerce its WSS Marks in connection with footwear and apparel at least as
`
`early as March 9, 2011 continuously to the present.
`
`9.
`
`Eurostar successfully has sustained and expanded its business by focusing on the
`
`urban market and emphasizing athletic footwear and apparel tied to sports popular in urban
`
`communities such as basketball and soccer. In addition to its own WSS branded footwear and
`
`apparel, Eurostar’s WSS branded retail stores and e-commerce platforms highlight and focus on
`
`top consumer brands for athletic and athleisure wear and footwear such as Nike, Jordan,
`
`Converse, Adidas and Puma.
`
`10.
`
`The company is heavily invested in the urban communities in which it operates.
`
`Eurostar hires the majority of its employees from the neighborhoods in which its WSS stores are
`
`located, it often features its employees on in-store signs and advertising campaigns, and it
`
`
`
`3
`
`
`
`sponsors or participates in more than 350 local events each year. To encourage community
`
`turnout and participation, Eurostar frequently features at its events community leaders, local
`
`talent, well-known entertainers, and professional athletes. Multiple professional athletes
`
`participated in a minimum of 11 Eurostar events branded with the WSS Marks during 2018.
`
`These athletes included current and former professional athletes, including, but not limited to,
`
`multiple players from each of the following: Dallas Cowboys football team; Houston Rockets
`
`basketball team; Chivas soccer team; Sacramento Kings basketball team; Los Angeles Lakers
`
`basketball team; Los Angeles Rams football team; and LA Galaxy soccer team.
`
`11.
`
`Over the last three years ending 2018, Eurostar has generated nearly $1 billion in
`
`sales in the United States through its brick-and-mortar stores and e-commerce platforms using
`
`the WSS Marks. At the time Applicant filed the Opposed Application, Eurostar was the largest
`
`neighborhood-based specialty retailer of athletic footwear in the Southwest.
`
`12.
`
`Having continuously and extensively used its WSS Marks in commerce in
`
`connection with the retail sale of footwear and apparel for over twenty years and in connection
`
`with footwear and apparel for nearly a decade, Eurostar has longstanding rights in the WSS
`
`Marks.
`
`13.
`
`The high quality of goods and services provided in connection with the WSS
`
`Marks, long-standing and widespread brand exposure and promotional efforts, and significant
`
`and sustained commercial success has resulted in the WSS Marks being immediately
`
`recognizable to relevant consumers and industry experts in connection with the retail sale of
`
`footwear and apparel, as well as for footwear and apparel.
`
`14.
`
`The WSS Marks have earned and developed a valuable reputation that is of
`
`significant worth to Eurostar.
`
`
`
`4
`
`
`
`15. WSS is inherently distinctive for the goods and services Eurostar provides in
`
`connection with its WSS Marks. Further, Eurostar has developed valuable goodwill in the WSS
`
`Marks.
`
`16.
`
`In addition to the common law rights that Opposer has accrued in its WSS Marks
`
`due to its longstanding, continuous, extensive and high-profile use, Opposer also owns sixteen
`
`(16) federal registrations and applications for which the USPTO has issued Notices of Allowance
`
`for the WSS Marks, the particulars of which are summarized below:
`
`Mark and
`Application/
`Registration No.
`
`WSS
`
`App. Filing Date
`and, as applicable,
`Reg. Date/Allowance
`Date
`Filed 02/05/2019
`
`Reg. No. 5,834,402
`
`Registered 08/13/2019
`
`Goods/Services and Date of First Use
`Anywhere and In Commerce
`
`Class 9: Downloadable software in the
`nature of a mobile application for consumers
`to receive coupons, offers, promotions,
`rebates, rewards, deals, and discounts;
`Downloadable software in the nature of a
`mobile application for consumers to
`participate in, track, use and receive points
`and rewards in a rewards and customer
`loyalty program; Downloadable software in
`the nature of a mobile application for
`consumers to participate in surveys,
`sweepstakes and contests; Downloadable
`software in the nature of a mobile
`application for consumers to make online
`purchases of clothing, footwear, headgear
`and general merchandise; Downloadable
`software in the nature of a mobile
`application to enable users to locate retail
`stores selling clothing, footwear, headgear
`and general merchandise
`
`First used anywhere at least as early as:
`11/01/2017
`
`First used in commerce at least as early as:
`11/01/2017
`
`
`
`5
`
`
`
`Mark and
`Application/
`Registration No.
`
`WSS
`
`App. Filing Date
`and, as applicable,
`Reg. Date/Allowance
`Date
`Filed 08/29/2019
`
`Reg. No. 6,018,625
`
`Registered 03/24/2020
`
`Filed 07/15/1998
`
`Registered 02/22/2000
`
`Filed 07/16/2010
`
`Registered 11/08/2011
`
`Filed 05/17/2012
`
`Registered 01/29/2013
`
`
`
`Reg. No. 2,320,586
`
`
`
`Reg. No. 4,053,796
`
`
`
`Reg. No. 4,282,055
`
`Goods/Services and Date of First Use
`Anywhere and In Commerce
`
`Class 35: Retail store services for clothing,
`headwear, footwear, and fashion accessories;
`Online retail store services for clothing,
`headwear, footwear, and fashion accessories
`
`First used anywhere at least as early as:
`04/1998
`
`First used in commerce at least as early as:
`04/1998
`
`Class 35: Retail shoe store services
`
`First used anywhere at least as early as:
`04/1998
`
`First used in commerce at least as early as:
`04/1998
`Class 35: Retail store services featuring
`footwear and apparel
`
`First used anywhere at least as early as:
`04/02/2010
`
`First used in commerce at least as early as:
`03/09/2011
`
`Class 35: Retail store services in the field of
`clothing and shoes
`
`First used anywhere at least as early as:
`06/30/2010
`
`First used in commerce at least as early as:
`06/30/2010
`
`
`
`6
`
`
`
`Mark and
`Application/
`Registration No.
`
`App. Filing Date
`and, as applicable,
`Reg. Date/Allowance
`Date
`Filed 11/22/2017
`
`Registered 06/05/2018
`
`
`
`
`
`Reg. No. 5,486,612
`
`Reg. No. 5,834,403
`
`Filed 02/05/2019
`
`Registered 08/13/2019
`
`Goods/Services and Date of First Use
`Anywhere and In Commerce
`
`Class 35: Retail store services for headwear,
`footwear, and fashion accessories; Online
`retail store services for clothing, headwear,
`footwear, and fashion accessories
`
`First used anywhere at least as early as:
`06/30/2010
`
`First used in commerce at least as early as:
`06/30/2010
`
`Class 9: Downloadable software in the
`nature of a mobile application for consumers
`to receive coupons, offers, promotions,
`rebates, rewards, deals, and discounts;
`Downloadable software in the nature of a
`mobile application for consumers to
`participate in, track, use and receive points
`and rewards in a rewards and customer
`loyalty program; Downloadable software in
`the nature of a mobile application for
`consumers to participate in surveys,
`sweepstakes and contests; Downloadable
`software in the nature of a mobile
`application for consumers to make online
`purchases of clothing, footwear, headgear
`and general merchandise; Downloadable
`software in the nature of a mobile
`application to enable users to locate retail
`stores selling clothing, footwear, headgear
`and general merchandise
`
`First used anywhere at least as early as:
`11/01/2017
`
`First used in commerce at least as early as:
`11/01/2017
`
`
`
`7
`
`
`
`Mark and
`Application/
`Registration No.
`
`App. Filing Date
`and, as applicable,
`Reg. Date/Allowance
`Date
`Filed 11/22/2017
`
`Registered 12/11/2018
`
`
`
`
`
`Reg. No. 5,625,589
`
`Reg. No. 5,987,868
`
`Filed 02/05/2019
`
`Registered 02/18/2020
`
`Goods/Services and Date of First Use
`Anywhere and In Commerce
`
`Class 35: Retail store services for headwear,
`footwear, and fashion accessories; Online
`retail store services for clothing, headwear,
`footwear, and fashion accessories
`
`First used anywhere at least as early as:
`06/30/2010
`
`First used in commerce at least as early as:
`06/30/2010
`
`Class 9: Downloadable software in the
`nature of a mobile application for consumers
`to receive coupons, offers, promotions,
`rebates, rewards, deals, and discounts;
`Downloadable software in the nature of a
`mobile application for consumers to
`participate in, track, use and receive points
`and rewards in a rewards and customer
`loyalty program; Downloadable software in
`the nature of a mobile application for
`consumers to participate in surveys,
`sweepstakes and contests; Downloadable
`software in the nature of a mobile
`application for consumers to make online
`purchases of clothing, footwear, headgear
`and general merchandise; Downloadable
`software in the nature of a mobile
`application to enable users to locate retail
`stores selling clothing, footwear, headgear
`and general merchandise
`
`First used anywhere at least as early as:
`11/01/2017
`
`First used in commerce at least as early as:
`11/01/2017
`
`
`
`8
`
`
`
`Mark and
`Application/
`Registration No.
`
`WSS CARES!
`
`App. Filing Date
`and, as applicable,
`Reg. Date/Allowance
`Date
`Filed 01/23/2018
`
`Reg. No. 5,545,847
`
`Registered 08/21/2018
`
`WSS CARES!
`
`Filed 01/23/2018
`
`Reg. No. 5,554,655
`
`Registered 06/04/2018
`
`Goods/Services and Date of First Use
`Anywhere and In Commerce
`
`Class 35: Retail store services for headwear,
`footwear, and fashion accessories; Online
`retail store services for clothing, headwear,
`footwear, and fashion accessories
`
`First used anywhere at least as early as:
`12/19/2017
`
`First used in commerce at least as early as:
`12/19/2017
`
`Class 41: Organizing and conducting
`community sporting and cultural events
`featuring a variety of activities, namely,
`artistic, athletic, sporting, musical, and
`cultural events, and games for children,
`families and individuals; Organizing and
`conducting civic events in the nature of
`personal appearances by athletes, musicians,
`government officials, and local community
`leaders; Entertainment services, namely,
`producing and providing cultural and arts
`events, presentation of live show
`performances, and live performances by a
`musical group or solo musical performer
`
`First used anywhere at least as early as:
`12/19/2017
`
`First used in commerce at least as early as:
`12/19/2017
`
`
`
`9
`
`
`
`Mark and
`Application/
`Registration No.
`
`App. Filing Date
`and, as applicable,
`Reg. Date/Allowance
`Date
`Filed 01/23/2018
`
`Registered 08/21/2018
`
`Filed 01/23/2018
`
`Registered 09/04/2018
`
`Reg. No. 5,545,850
`
`Reg. No. 5,554,656
`
`
`
`
`
`Goods/Services and Date of First Use
`Anywhere and In Commerce
`
`Class 35: Retail store services for headwear,
`footwear, and fashion accessories; Online
`retail store services for clothing, headwear,
`footwear, and fashion accessories
`
`First used anywhere at least as early as:
`12/19/2017
`
`First used in commerce at least as early as:
`12/19/2017
`
`Class 41: Organizing and conducting
`community sporting and cultural events
`featuring a variety of activities, namely,
`artistic, athletic, sporting, musical, and
`cultural events, and games for children,
`families and individuals; Organizing and
`conducting civic events in the nature of
`personal appearances by athletes, musicians,
`government officials, and local community
`leaders; Entertainment services, namely,
`producing and providing cultural and arts
`events, presentation of live show
`performances, and live performances by a
`musical group or solo musical performer
`
`First used anywhere at least as early as:
`12/19/2017
`
`First used in commerce at least as early as:
`12/19/2017
`
`Filed 10/31/2018
`
`Allowed 12/03/2019
`
`
`
`Class 35: Retail store services for clothing,
`headwear, footwear, and fashion accessories;
`Online retail store services for clothing,
`headwear, footwear, and fashion accessories
`
`
`
`App. No. 88/176,248
`
`
`
`10
`
`
`
`Mark and
`Application/
`Registration No.
`
`WSS
`
`App. Filing Date
`and, as applicable,
`Reg. Date/Allowance
`Date
`Filed 08/29/2019
`
`App. No. 88/598,504
`
`Allowed 03/03/2020
`
`
`
`
`
`WSS
`
`Filed 08/29/2019
`
`App. No. 88/598,524
`
`Allowed 03/10/2020
`
`
`
`Goods/Services and Date of First Use
`Anywhere and In Commerce
`
`Class 25: Shirts; T-shirts; Long-sleeved
`shirts; Short-sleeved shirts; Shorts; Sweat
`shorts; Pants; Sweat pants; Tops as clothing;
`Tank tops; Fleece tops; Jerseys; Sweatshirts;
`Hoods; Hooded sweatshirts; Jumpsuits;
`Jackets; Pullovers; Track jackets; Socks;
`Footwear; Athletic footwear; Athletic shoes;
`Flip-flops for use as footwear; Slides as
`footwear; Headwear; Caps being headwear;
`Hats
`
`Class 28: Balls for sports; Gymnastic and
`sporting articles not included in other
`classes, namely, balls, knee pads, goals and
`nets all for soccer, and bags specially
`adapted for holding or carrying balls and
`equipment for soccer; Gymnastic and
`sporting articles not included in other
`classes, namely, balls, shoulder pads, leg
`pads, knee pads, elbow pads, chest pads, and
`gloves all for football, and bags specially
`adapted for holding or carrying balls and
`equipment for football; Gymnastic and
`sporting articles not included in other
`classes, namely, balls, nets, and hoops all for
`basketball, and bags specially adapted for
`holding or carrying balls and equipment for
`basketball
`
`
`
`17.
`
`All of the registrations identified above (“Opposer’s Registrations”) are valid and
`
`subsisting. The Opposer’s Registrations (i) constitute prima facie evidence of the validity of
`
`Opposer’s WSS Marks, and Opposer’s ownership of and exclusive right to use WSS in
`
`commerce, as well as (ii) provide constructive notice of Opposer’s nationwide rights in WSS.
`
`True and correct copies of printouts from the USPTO’s electronic database, the TSDR, for all of
`
`the Opposer’s Registrations and the above applications showing their current status and
`
`
`
`11
`
`
`
`ownership are attached hereto as Exhibit 1 and are incorporated by reference herein as if set forth
`
`in full.
`
`Applicant and Its WS (Stylized) Mark
`
`18.
`
`Upon information and belief, MSC, WS directly and/or through its affiliates,
`
`related companies and/or licensees owns and operates a brasserie-style restaurant called The
`
`Tavern by WS and a private, members-only club and restaurant called WS New York, both located
`
`in New York City’s Hudson Yards waterfront development.
`
`19.
`
`In August 2019, more than 20 years after Opposer’s first use of WSS, Applicant
`
`filed its intent-to-use Application No. 88/574,126 with the USPTO for WS (Stylized), the
`
`Opposed Application, for the same or related goods and services already offered by Opposer
`
`under its WSS Marks. The Opposed Application consists of the letters “W” and “S” in a stylized
`
`font, which so resembles Opposer’s WSS Marks so as to make it confusingly similar to
`
`Opposer’s WSS Marks, owned, previously used and registered by Opposer several times over.
`
`(See Exhibit 1 and paragraphs 6-17 supra) The particulars of the Opposed Application are
`
`summarized below:
`
`Mark and
`Application No.
`
`
`
`Serial No. 88/574,126
`
`
`
`
`
`App. Filing Date
`
`Goods/Services As Filed
`
`08/10/2019
`
`Class 25: Clothing, namely, t-shirts, shirts,
`golf shirts, polo shirts, jackets, hats,
`baseball caps, golf caps, sweatshirts,
`sweaters, coats, vests, gloves, scarves, and
`ties as clothing; chefs' shirts and related
`apparel for use in cooking and the culinary
`arts in the nature of pants, hats, headwear,
`shirts, jackets, aprons, gloves, and chef
`un
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
