Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA1105544
`01/04/2021
`
`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
`
`AnnTaylor Loft Borrower Lux SCS
`
`Granted to Date
`of previous ex-
`tension
`
`Address
`
`Attorney informa-
`tion
`
`01/03/2021
`
`14, RUE EDWARD STEICHEN
`LUXEMBOURG CITY, L-2540
`LUXEMBOURG
`
`LAURA POPP-ROSENBERG
`FROSS ZELNICK LEHRMAN & ZISSU, P.C.
`151 W. 42ND STREET, 17TH FLOOR
`NEW YORK, NJ 07305
`UNITED STATES
`Primary Email: lpopp-rosenberg@fzlz.com
`Secondary Email(s): ttabfiling@fzlz.com, dnuzacci@fzlz.com
`212135900
`
`Docket Number
`
`ANLX 2006896
`
`Applicant Information
`
`Application No.
`
`88634272
`
`Publication date
`
`07/07/2020
`
`Opposition Filing
`Date
`
`Applicant
`
`01/04/2021
`
`Opposition Peri-
`od Ends
`
`01/03/2021
`
`JUSTIN PARK
`450 MURRAY HILL PARKWAY UNIT E
`EAST RUTHERFORD, NJ 07073
`UNITED STATES
`
`Goods/Services Affected by Opposition
`
`Class 018. First Use: 2013/01/15 First Use In Commerce: 2013/01/15
`All goods and services in the class are opposed, namely: Backpacks, book bags, sports bags, bum
`bags, wallets and handbags
`
`Class 025. First Use: 2013/01/15 First Use In Commerce: 2013/01/15
`All goods and services in the class are opposed, namely: Outerwear, namely, scarves, shawls,
`ponchos, gloves, hats, headbands, earmuffs,and socks
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`Marks Cited by Opposer as Basis for Opposition
`
`
`ESTTA1105544
`01/04/2021
`
`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
`
`AnnTaylor Loft Borrower Lux SCS
`
`Granted to Date
`of previous ex-
`tension
`
`Address
`
`Attorney informa-
`tion
`
`01/03/2021
`
`14, RUE EDWARD STEICHEN
`LUXEMBOURG CITY, L-2540
`LUXEMBOURG
`
`LAURA POPP-ROSENBERG
`FROSS ZELNICK LEHRMAN & ZISSU, P.C.
`151 W. 42ND STREET, 17TH FLOOR
`NEW YORK, NJ 07305
`UNITED STATES
`Primary Email: lpopp-rosenberg@fzlz.com
`Secondary Email(s): ttabfiling@fzlz.com, dnuzacci@fzlz.com
`212135900
`
`Docket Number
`
`ANLX 2006896
`
`Applicant Information
`
`Application No.
`
`88634272
`
`Publication date
`
`07/07/2020
`
`Opposition Filing
`Date
`
`Applicant
`
`01/04/2021
`
`Opposition Peri-
`od Ends
`
`01/03/2021
`
`JUSTIN PARK
`450 MURRAY HILL PARKWAY UNIT E
`EAST RUTHERFORD, NJ 07073
`UNITED STATES
`
`Goods/Services Affected by Opposition
`
`Class 018. First Use: 2013/01/15 First Use In Commerce: 2013/01/15
`All goods and services in the class are opposed, namely: Backpacks, book bags, sports bags, bum
`bags, wallets and handbags
`
`Class 025. First Use: 2013/01/15 First Use In Commerce: 2013/01/15
`All goods and services in the class are opposed, namely: Outerwear, namely, scarves, shawls,
`ponchos, gloves, hats, headbands, earmuffs,and socks
`
`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.
`
`3359615
`
`Registration Date
`
`12/25/2007
`
`Application Date
`
`01/12/2006
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`LOFT
`
`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
`
`Application Date
`
`08/15/2007
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`LOFT
`
`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.
`
`3488664
`
`Registration Date
`
`08/19/2008
`
`Application Date
`
`01/12/2006
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`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; ] HEAD WEAR; AND FOOTWEAR
`
`U.S. Registration
`No.
`
`3700020
`
`Registration Date
`
`10/20/2009
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`LOFT
`
`NONE
`
`Application Date
`
`07/11/2008
`
`Foreign Priority
`Date
`
`NONE
`
`
`
`Goods/Services
`
`Class 036. First use: First Use: 2008/10/01 First Use In Commerce: 2008/10/01
`CREDIT CARD SERVICES
`
`U.S. Registration
`No.
`
`3703017
`
`Registration Date
`
`10/27/2009
`
`Application Date
`
`08/06/2008
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`LOFT
`
`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.
`
`4201711
`
`Registration Date
`
`09/04/2012
`
`Application Date
`
`01/17/2012
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`LOFT
`
`NONE
`
`Class 009. First use: First Use: 2003/04/01 First Use In Commerce: 2003/04/01
`Magnetic coded gift cards and electronic encoded gift certificates which may
`then be redeemed for goods or services
`
`U.S. Registration
`No.
`
`5360223
`
`Registration Date
`
`12/19/2017
`
`Application Date
`
`09/12/2013
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`LOFT
`
`NONE
`
`Class 009. First use: First Use: 1999/02/00 First Use In Commerce: 1999/02/00
`Sunglasses; eyeglasses; cases for eyeglasses; cases for sunglasses; magnetic
`coded gift cards and electronic encoded gift certificates which may then be re-
`deemed for goods or services
`Class 018. First use: First Use: 1998/08/31 First Use In Commerce: 1998/08/31
`Bags, namely, evening handbags, cosmetic cases sold empty, coin purses,
`clutch purses, clutch bags, tote bags, umbrellas
`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, foot-
`wear,headgear, bags, clothing accessories, hair accessories, sunglasses and
`
`
`
`eyeglasses, eyewear, watches; providing incentive awards by means of issu-
`ance of loyaltyrewards cards; providing an incentive awards program whereby
`customers are awarded loyalty points for purchases of company's goods and for
`use of company's co-branded credit card
`
`Attachments
`
`F3837249.pdf(20855 bytes )
`
`Signature
`
`/Laura Popp-Rosenberg/
`
`Name
`
`Date
`
`LAURA POPP-ROSENBERG
`
`01/04/2021
`
`
`
`
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`ANNTAYLOR LOFT BORROWER LUX
`SCS,
`
`
`
`
`Opposer,
`
`-against-
`
`
`JUSTIN PARK,
`
`
`
`
`Applicant.
`
`
`
`
`
`
`
`
`
`Opposition No. ____________
`
`NOTICE OF OPPOSITION
`
`Opposer AnnTaylor Loft Borrower Lux SCS (“Opposer”) believes that it will be
`
`
`
`damaged by issuance of a registration for the trademark LOF as applied for by Applicant Justin
`
`Park in U.S. Trademark Application Serial No. 88634272, and therefore opposes the same. As
`
`grounds for this opposition, Opposer states as follows:
`
`FACTS
`
`A.
`
`Opposer and Opposer’s LOFT Marks
`
`1.
`
`Opposer is a Luxembourg limited partnership with an address of 14, Rue Edward
`
`Steichen, Attn: Travis Management S.A., Luxembourg City, Luxembourg L-2540.
`
`2.
`
`Opposer, through its licensee, 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.
`
`The rich heritage of Opposer and its related companies dates back to 1954, when
`
`the first ANN TAYLOR store opened in New Haven, Connecticut. The LOFT brand was
`
`developed as an extension of the ANN TAYLOR brand in the 1990s.
`
`{F3756728.1 }
`
`
`1
`
`
`
`
`
`4.
`
`Since the first store opened in 1995, the LOFT brand has evolved into a nationally
`
`famous brand for women’s apparel, shoes, and accessories. Today, Opposer, through its licensee,
`
`operates hundreds of LOFT retail and outlet stores along with the e-commerce site www.loft.com
`
`and the more recently launched e-commerce site www.outlet.loft.com.
`
`5.
`
`The LOFT mark has been extensively used and promoted in connection with retail
`
`and online store services and a variety of clothing, shoes, accessories, and related goods and
`
`services. Through decades of extensive promotion and use, and the success of offerings under the
`
`mark, the LOFT mark has become a strong trademark rights with enormous goodwill.
`
`6.
`
`Long before any date upon which Applicant can rely, Opposer’s LOFT mark
`
`became uniquely identified with Opposer and has come to identify the products of Opposer
`
`exclusively.
`
`7.
`
`In addition to its common law trademark rights existing by virtue of the long use
`
`of the LOFT mark in commerce, Opposer also owns numerous U.S. trademark registrations 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
`
`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
`
`3434715
`
`LOFT
`
`May 27, 2008 Class 26: Hair accessories, namely,
`scrunchies, barrettes and clips; ponytail holders
`
`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
`
`3700020*
`
`LOFT
`
`Oct. 20, 2009 Class 36: Credit card services
`
`{F3756728.1 }
`
`
`2
`
`
`
`Reg’n No. Mark
`
`Reg’n Date
`
`Class and Goods/Services
`
`3703017
`
`LOFT
`
`Oct. 27, 2009 Class 9: sunglasses and sunglass cases
`
`
`
`4201711
`
`LOFT
`
`5360223
`
`LOFT
`
`Class 14: jewelry
`
`Class 18: handbags, shoulder bags, cosmetic
`cases sold empty, tote bags
`
`Sept. 4, 2012 Class 9: Magnetic coded gift cards and
`electronic encoded gift certificates which may
`then be redeemed for goods or services
`
`Dec. 19, 2017 Class 9: Sunglasses; eyeglasses; cases for
`eyeglasses; cases for sunglasses; magnetic
`coded gift cards and electronic encoded gift
`certificates which may then be redeemed for
`goods or services
`
`Class 18: Bags, namely, evening handbags,
`cosmetic cases sold empty, coin purses, clutch
`purses, clutch bags, tote bags, umbrellas
`
`Class 35: On-line and in store retail store
`services in the fields of clothing, footwear,
`headgear, bags, clothing accessories, hair
`accessories, sunglasses and eyeglasses,
`eyewear, watches; providing incentive awards
`by means of issuance of loyalty rewards cards;
`providing an incentive awards program
`whereby customers are awarded loyalty points
`for purchases of company's goods and for use
`of company's co-branded credit card
`
`
`
`8.
`
`The above registrations are valid, subsisting, and in full effect, and serve as prima
`
`facie evidence of the validity of the LOFT Marks and of Opposer’s exclusive right to use the
`
`LOFT Marks in connection with the goods identified therein, pursuant to Section 33(a) of the
`
`Lanham Act, 15 U.S.C. § 1115(a). Opposer’s trademark registrations also place others, including
`
`Applicant, on constructive notice of those rights. See 15 U.S.C. § 1072. Furthermore, the
`
`trademark registrations marked with asterisk (*) have become incontestable for at least a portion
`
`of the identified goods 343715 pursuant to Section 15 of the Lanham Act, 15 U.S.C. § 1065, and
`
`{F3756728.1 }
`
`
`3
`
`
`
`thus constitute conclusive evidence of the validity of that mark, of Opposer’s ownership of the
`
`mark, and of Opposer’s exclusive right to use the mark in connection with the listed goods. See
`
`
`
`15 U.S.C. § 1115(b).
`
`B.
`
`Applicant and Its Application
`
`9.
`
`Upon information and belief, and according to the records of the U.S. Patent and
`
`Trademark Office (the “USPTO”), Applicant Justin Park (“Applicant”) is an individual with an
`
`address of 450 Murray Hill Parkway Unit E, East Rutherford, New Jersey 07073.
`
`10.
`
`Upon information and belief, and according to the records of the USPTO, on or
`
`about September 27, 2019, Applicant filed U.S. Trademark Application Serial No. 88634272
`
`(the “Application”) to register the word mark LOF (“Applicant’s Mark”) in International Class
`
`18 for “Backpacks, book bags, sports bags, bum bags, wallets and handbags” and in International
`
`Class 25 for “Outerwear, namely, scarves, shawls, ponchos, gloves, hats, headbands, earmuffs,
`
`and socks,” under Section 1(a) of the Lanham Act, 15 U.S.C. § 1051(a), claiming January 15,
`
`2013 as the date of first use and first use in commerce.
`
`11.
`
`Applicant is not connected to Opposer in any way, and Applicant has not been
`
`authorized by Opposer to register or use Applicant’s Mark.
`
`FIRST GROUND FOR RELIEF
`PRIORITY AND LIKELIHOOD OF CONFUSION UNDER 15 U.S.C. § 1052(d)
`
`Opposer repeats the allegations contained in Paragraphs 1 through 11 above as if
`
`12.
`
`fully set forth herein.
`
`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.
`
`14.
`
`Applicant’s Mark is highly similar to the LOFT mark in terms of sight, sound, and
`
`commercial impression.
`
`{F3756728.1 }
`
`
`4
`
`
`
`
`
`15.
`
`The goods identified in the Application are identical or very closely related to
`
`goods and services offered by and registered to Opposer under the LOFT mark.
`
`16.
`
`Based on the strength of Opposer’s registered LOFT mark, the breadth of goods
`
`and services in connection with which the LOFT mark is used and registered, the similarity of
`
`the parties’ marks, 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.
`
`17.
`
`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
`
`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
`
`the registration sought by Applicant in U.S. Trademark Application Serial No. 88634272 be
`
`denied.
`
`
`Dated: January 4, 2021
`
`
`
`
`
`
`
`
`
`
`
`
`
`{F3756728.1 }
`
`
`5
`
`Fross Zelnick Lehrman & Zissu, P.C.
`
`By: /Laura Popp-Rosenberg/
` Laura Popp-Rosenberg
` Daniel M. Nuzzaci
`151 West 42nd Street, 17th Floor
`New York, New York 10036
`Phone: (212) 813-5900
`Email: lpopp-rosenberg@fzlz.com
` dnuzzaci@fzlz.com
`
`Attorneys for Opposer Annco, Inc.
`
`
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