ESTTA Tracking number:
`
`Filing date:
`
`ESTTA1316338
`10/17/2023
`
`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
`
`Entity
`
`Address
`
`Attorney informa-
`tion
`
`Loft Ipco LLC
`
`limited liability company
`
`Incorporated or
`registered in
`
`Delaware
`
`933 MACARTHUR BOULEVARD
`MAHWAH, NJ 07430
`UNITED STATES
`
`DANIEL NUZZACI
`FROSS ZELNICK LEHRMAN & ZISSU, P.C.
`151 WEST 42ND STREET, 17TH FLOOR
`NEW YORK, NY 10036
`UNITED STATES
`Primary email: dnuzzaci@fzlz.com
`Secondary email(s): lpopp-rosenberg@fzlz.com, ttabfiling@fzlz.com
`212-813-5900
`
`Docket no.
`
`LOFT 2220790
`
`Applicant information
`
`Application no.
`
`97553652
`
`Opposition filing
`date
`
`Applicant
`
`10/17/2023
`
`Anthony Tannous
`UNIT 2, 13 MYOLA STREET
`CARRUM, 3197
`AUSTRALIA
`
`Goods/services affected by opposition
`
`Publication date
`
`10/17/2023
`
`Opposition period
`ends
`
`11/16/2023
`
`Class 014. First Use: May 31, 2022 First Use In Commerce: May 31, 2022
`All goods and services in the class are opposed, namely: Jewelry
`
`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
`
`Register
`
`Principal
`
`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: Mar 2, 1995 First Use In Commerce: Mar 2,
`1995
`[ ON-LINE AND IN STORE RETAIL STORE SERVICES IN THE FIELDS OF
`CLOTHING, FOOTWEAR, HANDBAGS, SMALL LEATHER ACCESSORIES,
`TOILETRIES, CONSUMABLE BATH PRODUCTS AND COSMETIC
`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.
`
`3488664
`
`Register
`
`Principal
`
`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: Mar 2, 1995 First Use In Commerce: Mar 2,
`1995
`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
`
`Register
`
`Principal
`
`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: Feb 1999 First Use In Commerce: Feb 1999
`SUNGLASSES AND SUNGLASS CASES
`Class 014. First use: First Use: May 14, 1998 First Use In Commerce: May 31,
`1998
`JEWELRY
`Class 018. First use: First Use: Aug 31, 1998 First Use In Commerce: Aug 31,
`1998
`HANDBAGS, SHOULDER BAGS, [ EVENING HANDBAGS, ] COSMETIC
`CASES SOLD EMPTY, [ WALLETS, CLUTCH PURSES, ] TOTE BAGS [, UM-
`BRELLAS ]
`
`U.S. registration
`no.
`
`5360223
`
`Application date
`
`09/12/2013
`
`

`

`Register
`
`Principal
`
`Registration date
`
`12/19/2017
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`LOFT
`
`NONE
`
`Class 009. First use: First Use: Feb 1999 First Use In Commerce: Feb 1999
`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: Aug 31, 1998 First Use In Commerce: Aug 31,
`1998
`Bags, namely, evening handbags, cosmetic cases sold empty, coin purses,
`clutch purses, clutch bags, tote bags, umbrellas
`Class 035. First use: First Use: Mar 2, 1995 First Use In Commerce: Mar 2,
`1995
`On-line and in store retail store services in the fields of clothing, footwear,
`headgear, bags, clothing accessories, hair accessories, sunglasses and eye-
`glasses, eyewear, watches; providing incentive awards by means of issuance of
`loyalty rewards cards; providing an incentive awards program whereby custom-
`ers are awarded loyalty points for purchases of company's goods and for use of
`company's co-branded credit card
`
`Attachments
`
`F5297394.PDF(377883 bytes )
`
`Signature
`
`Name
`
`Date
`
`/Daniel Nuzzaci/
`
`Daniel Nuzzaci
`
`10/17/2023
`
`

`

`
`
`LOFT IPCO LLC,
`
`
`
`
`Opposer,
`
`
`
`
`
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`-against-
`
`
`ANTHONY TANNOUS,
`
`
`
`
`Applicant.
`
`
`
`NOTICE OF OPPOSITION
`
`Opposer Loft Ipco LLC (“Opposer”) believes that it will be damaged by the issuance of a
`
`
`
`registration to Applicant Anthony Tannous (“Applicant”) for the mark
`
` (the “LUFT
`
`Mark”) as applied for in U.S. Trademark Application Serial No. 97553652, and therefore
`
`opposes the same. As grounds for this opposition, Opposer states as follows:
`
`A.
`
`Opposer and Opposer’s LOFT Mark
`
`FACTS
`
`1.
`
`Opposer is a Delaware limited liability company with an address at 933
`
`MacArthur Boulevard, Mahwah, New Jersey 07430.
`
`2.
`
`Opposer, together with its related companies, is a leading national specialty
`
`retailer of women’s apparel, jewelry, shoes, cosmetic cases, bags, clothing accessories, and
`
`related goods and services, sold primarily under the ANN TAYLOR and LOFT brands.
`
`3.
`
`The rich heritage of Opposer’s brands 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.
`
`{F5278826.2 }
`
`
`
`

`

`
`
`4.
`
`Since the first LOFT store opened in 1995, the LOFT brand has evolved into a
`
`nationally famous brand. Today, there are over 500 LOFT retail and outlet stores throughout the
`
`country, and consumers also can shop the LOFT brand through www.loft.com.
`
`5.
`
`The LOFT mark has been extensively used and promoted in connection with retail
`
`and online store services and a variety of apparel, jewelry, shoes, cosmetic cases, bags, clothing
`
`accessories, and related goods and services. Through decades of extensive use and promotion –
`
`and the success of the offerings under the mark – Opposer, itself and through its predecessor-in-
`
`interest, has developed strong trademark rights and enormous goodwill in the LOFT mark.
`
`6.
`
`Long before any date upon which Applicant can rely in support of its mark,
`
`Opposer’s LOFT mark became uniquely identified with Opposer and came to identify the goods
`
`and services of Opposer exclusively.
`
`7.
`
`In addition to its strong common law trademark rights existing by virtue of long
`
`use of the LOFT mark in commerce, Opposer owns numerous federal registrations for the LOFT
`
`mark in connection with a wide variety of goods and services, including the following:
`
`Mark
`
`Reg. No. Reg. Date
`
`LOFT
`
`3359615
`
`12/25/2007
`
`LOFT
`
`3488664
`
`8/19/2008
`
`LOFT
`
`3703017
`
`10/27/2009
`
`LOFT
`
`5360223
`
`12/19/2017
`
`Goods and Services
`IC 35: on-line and in store retail store services in the
`fields of clothing, footwear, handbags
`IC 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
`IC 9: sunglasses and sunglasses cases
`
`IC 14: jewelry
`
`IC 18: handbags, shoulder bags, cosmetic cases sold
`empty, tote bags
`IC 9: sunglasses; eyeglasses; cases for eyeglasses; cases
`for sunglasses; magnetic coded gift cards and electronic
`encoded gift certificates which may then be redeemed
`
`{F5278826.2 }
`
`
`2
`
`

`

`
`
`Goods and Services
`for goods or services
`
`IC 18: bags, namely, evening handbags, cosmetic cases
`sold empty, coin purses, clutch purses, clutch bags, tote
`bags, umbrellas
`
`IC 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
`
`Mark
`
`Reg. No. Reg. Date
`
`
`B.
`
`Applicant and the Application
`
`8.
`
`Upon information and belief, Applicant is an individual of Australian citizenship
`
`with an address at 13 Myola Street, Unit 2, Carrum 3197, Australia.
`
`9.
`
`Upon information and belief, on August 18, 2022, Applicant filed U.S. Trademark
`
`Application Serial No. 97553652 (the “Application”) to the LUFT Mark:
`
`
`
`in International Class 14 for “jewelry” pursuant to Section 1(a) of the Lanham Act, 15 U.S.C.
`
`§ 1051(a), based on an alleged first use date of May 31, 2022.
`
`10.
`
`Applicant is not connected to Opposer in any way, and Applicant has not been
`
`authorized by Opposer to register or use the LUFT Mark.
`
`{F5278826.2 }
`
`
`3
`
`

`

`
`
`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 10 above as if
`
`11.
`
`fully set forth herein.
`
`12.
`
`Upon information and belief, at the time Applicant filed the Application,
`
`Applicant had actual notice of Opposer’s prior and exclusive rights in and to the LOFT mark. At
`
`the very least, Applicant was on constructive notice of Opposer’s prior and exclusive rights in
`
`the LOFT mark by virtue of Opposer’s federal trademark registration therefor, pursuant to
`
`Section 22 of the Lanham Act, 15 U.S.C. § 1072.
`
`13.
`
`Upon information and belief, the earliest date upon which Applicant can rely in
`
`support of the LUFT Mark is long after the use, registration, and acquisition of rights in the
`
`LOFT mark by Opposer. As such, Opposer’s rights in the LOFT mark are prior and superior to
`
`any rights Applicant may claim in the LUFT Mark.
`
`14.
`
`The LUFT Mark is highly similar to Opposer’s LOFT mark, including because
`
`the term LŪFT differs from the term LOFT by only an internal vowel. The substitution of the
`
`letter O for the Ū fails to eliminate the likelihood of confusion, including because both letters are
`
`vowels. Thus, the resulting term LŪFT is virtually identical to the term LOFT in appearance,
`
`sound, and overall commercial impression despite the letter substitution.
`
`15.
`
`The goods identified in the Application are identical to the goods identified in
`
`Opposer’s Registration No. 3703017 for the LOFT mark and to some of the goods offered under
`
`the LOFT mark.
`
`16.
`
`Based on the strength of the LOFT mark, the similarity of the parties’ marks, and
`
`the identity of the parties’ goods, consumers are likely to be deceived into falsely believing that
`
`the goods offered by Applicant under the LUFT Mark originate from or are otherwise associated
`
`{F5278826.2 }
`
`
`4
`
`

`

`
`
`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 the LUFT 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 the LUFT 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).
`
`18.
`
`By reason of the foregoing, Opposer is likely to be harmed by the registration of
`
`the LUFT Mark as applied for in the Application.
`
`
`
`WHEREFORE, Opposer respectfully requests that this opposition be sustained and that
`
`registration of the LUFT Mark as applied for in the Application be refused in its entirety.
`
`Dated: New York, New York
`October 17, 2023
`
`
`
`
`
`
`FROSS ZELNICK LEHRMAN & ZISSU, P.C.
`
`
`By: /Daniel M. Nuzzaci/
` Laura Popp-Rosenberg (lpopp-rosenberg@fzlz.com)
` Daniel M. Nuzzaci (dnuzzaci@fzlz.com)
`151 West 42nd Street, 17th Floor
`New York, New York 10036
`Phone: (212) 813-5900
`
`Attorneys for Opposer Loft Ipco LLC
`
`{F5278826.2 }
`
`
`5
`
`