Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA605856
`ESTTA Tracking number:
`05/22/2014
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`Petition for Cancellation
`
`Notice is hereby given that the following party requests to cancel indicated registration.
`Petitioner Information
`
`Name
`Entity
`
`Address
`
`Fashion Classes of New Jersey
`NJ Limited Liability Com-
`Citizenship
`pany
`605 Luyster Place
`Morganville, NJ 07751
`UNITED STATES
`
`Attorney informa-
`tion
`
`Perry M. Fonseca
`Law Office of Perry M. Fonseca
`12 Hamilton Court
`Lawrenceville, NJ 08648
`UNITED STATES
`pfonseca.law@verizon.net Phone:609-851-9998
`Registrations Subject to Cancellation
`
`Registration No
`Registrant
`
`4316207
`The Fashion Class LLC
`4th Floor
`New York, NY 10018
`UNITED STATES
`Goods/Services Subject to Cancellation
`
`Registration date
`
`New Jersey
`
`04/09/2013
`
`Class 041. First Use: 2010/07/01 First Use In Commerce: 2010/07/01
`All goods and services in the class are cancelled, namely: Arranging and conducting special events-
`for social entertainment purposes; Education services, namely, providing classes in the field of sew-
`ing
`
`Grounds for Cancellation
`
`Genericness
`The mark is merely descriptive
`Other
`
`Trademark Act section 23
`Trademark Act section 2(e)(1)
`The mark should not have been granted because
`causes confusion with petitioner's prior public
`use of similar common-law marks.
`Registration date
`01/28/2014
`
`Registration No
`Registrant
`
`4474630
`The Fashion Class LLC
`#4A
`New York, NY 10018
`UNITED STATES
`Goods/Services Subject to Cancellation
`
`

`
`Class 016. First Use: 2010/07/01 First Use In Commerce: 2010/07/01
`All goods and services in the class are cancelled, namely: Printed instructional and teaching materi-
`als, namely, tutorials in the field ofsewing and accompanied sewing patterns
`
`Grounds for Cancellation
`
`Genericness
`The mark is merely descriptive
`Other
`
`Trademark Act section 23
`Trademark Act section 2(e)(1)
`Mark should not have been granted because of
`petitioner's prior public use of confusingly similar
`common-law marks.
`
`Attachments
`
`Petition.pdf(1281391 bytes )
`Exhibits.pdf(5690222 bytes )
`
`The undersigned hereby certifies that a copy of this paper has been served upon all parties, at their address
`record by First Class Mail on this date.
`
`Certificate of Service
`
`Signature
`Name
`Date
`
`/Perry M. Fonseca/
`Perry M. Fonseca
`05/22/2014
`
`

`
`Docket No.: 218.003
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In re Registration Nos. 4,316,207 and 4,474,630
`Mark: THE FASHION CLASS
`
`Issued: April 9, 2013 and January 28, 2014, respectively
`
`Cancellation No.2
`
`FASHION CLASSES OF NJ,
`
`v.
`
`Petitioner,
`
`THE FASHION CLASS LLC
`
`Registrant.
`
`PETITION FOR CANCELLATION
`
`Fashion Classes of NJ (“Petitioner”), a New Jersey limited liability company having its
`
`principal place of business at 605 Luyster Place, Morganville, New Jersey 07751, believes that it
`
`is damaged by Registration Nos. 4,316,207 and 4,474,630 (hereinafter “the registered marks”),
`
`and hereby petitions to cancel the same under provisions of 15 U.S.C. §l064(3).
`
`To the best of petitioner's knowledge, the name and address of the current owner of the
`
`registrations is: The Fashion Class LLC, a limited liability company of New York with its
`
`principal place of business at 4"‘ Floor, 21 West 39”‘ Street, New York, New York 10018 (the
`
`“Registrant”). Petitioner also notes that the 4,316,207 registration lists the owner’s address as
`
`“4”‘ Floor”, whereas the 4,474,630 registration list the same owner’s address as “#4A”.
`
`As grounds for cancellation, Petitioner asserts that:
`
`

`
`Standing
`
`1.
`
`Petitioner is a provider of education services in various fashion-related areas,
`
`including sewing and design; petitioner also arranges and conducts special events for social
`
`entertainment purposes, for example fashion shows; and, petitioner also creates and provides
`
`printed instructional and teaching materials, namely tutorials in the field of sewing and
`
`accompanied sewing patterns.
`
`2.
`
`Petitioner has provided these goods and services to the public on a continuing and
`
`ongoing basis, using its unregistered mark “Fashion Classes of New Jersey” and similar
`
`umegistered marks since at least 2009. Petitioner has invested heavily and generated extensive
`
`goodwill in its name.
`
`3.
`
`Registrant has sent or caused to be sent to petitioner two letters demanding
`
`petitioner cease use of its name/unregistered mark(s) (see, Exhibits A and D, attached herewith).
`
`Petitioner business is being and will continue to be harmed by continued registration of the
`
`registrant°s marks.
`
`Grounds for Cancellation
`
`4.
`
`This petition of cancellation of the registered marks is timely, being filed and
`
`served within five years of the issue date for each of the registered marks.
`
`5.
`
`The registered marks are descriptive of the goods and services provided by
`
`registrant for which the marks were granted.
`
`6.
`
`The registered marks are generic within the industry including the uses for which
`
`the marks were granted.
`
`6.
`
`Petitioner’s public use of its unregistered mark, “Fashion Classes of New Jersey”,
`
`which registrant has stated as confusingly similar to the registered marks, as well as other similar
`
`marks including the terms “fashion” and “classes”, significantly antedates registrant’s use of the
`
`registered marks.
`
`

`
`7.
`
`Exhibits A — E, attached hereto, document correspondence to date between
`
`petitioner and registrant and their respective attorneys.
`
`For the reasons stated above, cancellation of registrant’s trademark Registration Nos.
`
`4,316,207 and 4,474630 is requested.
`
`Dated: May 22, 2014
`
`Respectfully submitted,
`
`/ewx
`
`Perry M. F onseca
`USPTO Attorney Registration No.: 50,975
`LAW OFFICE OF PERRY M.FONSECA, P.C.
`12 Hamilton Court
`
`Lawrenceville, New Jersey 08648
`(609) 851-9998
`(609) 851-1900 (Fax)
`Attorney For Petitioner
`
`

`
`CERTIFICATE OF SERVICE
`
`I, Perry M. Fonseca, Hereby certify that on May 22, 2014, I served copies of the Petition
`for Cancellation of U.S. Trademark Registrations Nos. 4,316,207 and 4,474,630 and its
`Exhibits A — E on the following parties by way of First Class U.S. Mail:
`
`The Fashion Class LLC LIMITED LIABILITY COMPANY NEW YORK
`#4A 21 W 39th Street
`
`New York, NEW YORK 10018
`
`The Fashion Class LLC LIMITED LIABILITY COMPANY NEW YORK
`4th Floor 21 West 39Th Street
`New York, NEW YORK 10018
`
`May 22. 2014
`Date
`
`”‘?’
`Signature
`
`

`
`Exhibit A
`
`

`
`The Fashion Ctosstim
`
`21 West 39"‘ Street, 4"‘ Floor
`New York, NY 10018
`p/(646) 329-6663
`\.*.*_‘.*.";.'.'.)‘l1-;‘.-t OZ]ltlC)fl(:,:l(;:;~;_ggm]
`
`A
`
`fashion f.)(:=s:gr> & Sewirig ( .‘i‘mse,x Io; ( "hilt f.t<‘II .\' teem
`
`37 one Lltll
`
`‘»
`
`t .1shion k‘lasses of ;\’e\\' lersev
`to? _-\mbo_\' Road
`.\lo1‘t‘,.ui\‘ille, .\’[] ti; /at
`
`Attention: Karen li. Lo/.ner
`
`Re: l'r.rdemarl\' lntrintgement
`
`llear \l.idam:
`
`the lirshion Class LLC (the ”Company") owns and opemtes The Fashion
`Classctf‘. the Company also owns trademarks associated with its business ,
`u‘.‘~\istei‘eti with the United States Patent and 'l'r;ulei‘nark Office with the
`re;.;istration number ”U.S. Reg. No. 4,f’>'lh,2()7," attached hereto tor your
`reference (the "'l‘rademark").
`
`It has come to our attention that your business, Fashion Classes of New
`lerse_\', has been using our Trademark or a very similar mark (the "Infringing
`’l'rademarl<") in association with the marketingg, sale, distribution or
`identification of its products and/or services, and is thus trading on the
`name, goodwill and reputation earned by the Company.
`It is possible that
`you were unaware of this conflict and we believe it is in our mutual interest
`to bring it to your attention and resolve it.
`
`Our 'l"rademarl< provides us with certain proprietary rights, including», the
`right to monitor and restrict the unauthorized Lise of our 'l'radema1'k, or
`confusingly similar trademarks, in association with non—Company products
`or services. We must exercise this right to protect the value of both our
`Trademark and of our business. Our Trademark signifies the higli quality of
`products and services offered by the Company and indicates to our
`customers and to the consuming public that all of our goods and/or se1‘\'ices
`come from a single source. As such, it contributes substantially to the
`goodwill and value of the Company. Federal law supports our position that
`confusingly similar trademarks may cause undesirable confusion in the
`public. This confusion may in this instance cause material and irreparable
`harm to our Trademark by eroding the distinct association aunony, our
`
`

`
`'l"rademarl<, our products and ser\'it'es, and the t ‘omp.m\~. \‘uur .1: (mm.
`Cfilllstlhltt? t1‘adeina1‘l< inhingeinent and unlair competition inuler lvuth -;l.ile
`and federal law, including the lfllllltllll .»’\ct, (I5 llbflt '.
`f~$_Li‘
`ltlfvl
`l
`l’.".«').
`Remedies for such infringeinent can include payment ol .tt‘ltl.ll Qllltl lrelvle
`damages, recovery of protits, reimbursement ol’ nlloriie\".~s lees, .nul m.I\' .i|-.n
`include injunctions against your further use ol the lnlrin3;in‘i-, ‘l'r.ulem.irl\ .uul
`the seizure of infringing materials.
`
`We’ respectfully request that you iininediately diseontimie any and all use ol
`the Infringing Trademark in association with the in'.irl\'eli1iy,, sale,
`distribution, or identification of your products or services. l’lease respoml to
`us in writing within fourteen (14) calendar days imlicalinp, that you will u-use
`and desist from any and all further use of our 'l'r-ademarlx, the inn‘:-m,-,m,-_
`Trademark, or any confusingly similar trademark. We hope this issue mu he
`resolved civilly and that we can avoid pursuing any lurther lep,al remetlies.
`
`This letter is not intended to be a full statement of the tarts in this matter, nor
`is it a waiver of our rights and remedies, whether at law or equity, all ml
`which are expressly reserved.
`
`Sineerel\},
`
`Kerri Quigley
`(lwner
`
`'l'he l‘asliion ("lass
`
`2! West fW“' Street, -1"‘ liloor
`
`New York, NY ltllllfi
`
`Enclosures (1)
`
`

`
`Exhibit B
`
`

`
`LAW OFFICE OF
`
`PERRY M FONSECA, PC
`12 HAMILTON COURT
`
`LAWRENCEVILLE, NEW JERSEY 08648
`
`PATENTS, TRADEMARKS AND COPYRIGHTS
`
`Perry M. Fonseca, Esq.
`NJ, NY and CA Bar
`Registered Patent Attorney
`
`August 1, 2013
`
`609-851-9998
`FAX: 609-912-0019
`pfonseca.law@verizon.net
`
`VIA CERTIFIED US IIIAIL
`
`Ms. Kerri Quigley, Owner
`The Fashion Class
`21 West 39the Street, 4”" Floor
`New York, NY 10018
`
`(646) 329-6663
`
`RE:
`
`Letter Dated June 27, 2013 to Fashion Classes of New Jersey
`
`Dear Madam:
`
`This office represents Fashion Classes of New Jersey in its Intellectual Property matters.
`Due to an inexplicable delay on the part of the U.S. Post Office, your letter dated June 27, 2013
`(hereinafter, “your letter”) was not received by our client until this week.
`
`Our client has asked us to look into the various assertions in your letter and advise them
`of a proper response, if any. Considering we have just received your letter, we respectfully ask
`you to allow our client two weeks from today’s date in which to respond. We will respond on
`behalf of Fashion Classes of New Jersey no later than August 15, 2013.
`
`Thank you for your kind consideration.
`
`Yours truly,
`
`LAW OFFICE OF
`
`PERRY M. FONSECA, P.C.
`
`/%A
`
`Perry M. Fonseca
`
`cczz
`
`Karen Lozner, President, Fashion Classes of NJ
`
`

`
`Exhibit C
`
`

`
`LAW OFFICE OF
`
`PERRY M FONSECA, PC
`12 HAMILTON COURT
`
`LAWRENCEVILLE, NEW JERSEY 08648
`
`PATENTS, TRADEMARKS AND COPYRIGHTS
`
`609-851-9998
`FAX: 609-912-0019
`pfonseca.law@verizon.net
`
`Perry M. Fonseca, Esq.
`NJ, NY and CA Bar
`Registered Patent Attorney
`
`August 15,2013
`
`VIA CERTIFIED US JWAIL
`
`Ms. Kerri Quigley, Owner
`The Fashion Class
`21 West 39the Street, 4”‘ Floor
`New York, NY 10018
`
`(646) 329-6663
`
`RE: Denial of Frivolous Claims and Affirmative Statement of
`
`Fashion Classes of NJ’s Rights
`
`Dear Madam:
`
`This letter is in response to your letter dated June 27, 2013 in behalf of The Fashion Class
`LLC (hereinafter, “TFC”) with respect to the mark “The Fashion Class®”, US Registration No.
`4,316,207 (hereinafter, the ‘“207 mark”).
`
`Denial of The Fashion Class LLC’s Claims
`
`Fashion Classes of New Jersey and its President, Karen E. Lozner (hereinafter, “Fashion
`Classes of NJ”), denies each and every allegation set forth in you June 27, 2013 letter, including:
`
`trademark infringement,
`
`trademark dilution,
`
`unfair competition,
`
`use of a “Very similar mark” to the ‘207 mark,
`
`trading on the name , goodwill or reputation of TFC, and
`
`Violations of state or federal law, including the Lanham Act.
`
`Affirmative Statements of Fashion Classes of NJ
`
`The following factors demonstrate that Fashion Classes of NJ ’s use of the term “Fashion
`Classes of NJ” does not infringe or dilute TFC’s ‘207 mark:
`
`

`
`First Use
`
`It’s President, Karen E.
`Fashion Classes of NJ is an LLC incorporated in New Jersey.
`Lozner, has consistently offered, advertised and taught “Fashion Classes” since early 2009, well
`before the ‘207 mark’s putative “first use” and “first use in commerce” date of July 1, 2010.
`Consequently, we demand that you provide evidence of your first use of the mark.
`
`Strength of Mark
`
`TFC operates its business within the state of New York. TFC’s primary clientele are
`located within the New York City geographical region. TFC does not advertise nor do business
`within New Jersey. TFC is not well known on a national level. Additionally, “The Fashion
`Class” has limited distinctiveness. Due to the descriptive nature of “The Fashion Class”, it is not
`a strong mark. The weakness of “The Fashion Class” as a mark weighs in favor of Fashion
`Classes of NJ.
`Indeed, “The Fashion Class” is generic within the industry including the use for
`which the ‘207 mark was granted.
`
`Actual Confusion
`
`In
`As TFC is aware, the basis for a trademark infringement claim is consumer confusion.
`your June 27, 2013 letter you did not provide any examples of actual confusion resulting from
`our concurrent use of the marks “Fashion Classes of NJ” and “The Fashion Class”. We demand
`
`that you provide examples of actual confusion relating from the use of the mark “Fashion Classes
`of NJ”.
`
`Length of Time the Marks Have Been Concurrently Used
`
`Fashion Classes of NJ began using “Fashion Classes” in early 2009. TFC began using the
`‘207 mark on July 1, 2010. For about 3 years both Fashion Classes of NJ and TFC have been
`using their respective marks without issue. This factor suggests that the concurrent use of our
`marks “Fashion Classes of NJ” and “The Fashion Class” does not result in consumer confusion.
`
`Fashion Classes of NJ ’s Intent
`
`Fashion Classes of NJ vehemently denies that we made any attempt to misappropriate
`TFC’s goodwill or to cause consumer confusion. Fashion classes of NJ was unaware of TFC’s
`use of the mark “The Fashion Class” at the time Fashion classes of NJ began using “Fashion
`Classes”, which was prior to TFC’s use of the ‘207 mark, and thus could not have possibly
`chosen “Fashion Classes of NJ” as an attempt to appropriate the goodwill of TFC.
`
`Dilution Claim
`
`Additionally, Fashion Classes of NJ asserts that TFC does not have grounds for a dilution
`In order to succeed on a dilution claim the plaintiff must show that their mark is “widely
`claim.
`recognized by the general public of the United States ...” (l5 U.S.C. §l125(c) (2)(A)). TFC
`fails to meet this requirement because of TFC’s lack of extensive national advertising, limited
`geographic reach of TFC’s sales, and lack of national recognition for the ‘207 mark.
`
`

`
`If TFC decides to take any litigious action (e.g., filing of any federal lawsuit, proceedings
`with the USPTO, etc.) Fashion Classes of NJ demands that TFC include a copy, in its entirety, of
`this letter.
`In addition, Fashion Classes of NJ demands that if TFC takes any litigious steps that
`TFC provide proper service or a copy of such correspondence.
`
`Conclusion
`
`For these reasons and others, Fashion Classes of NJ has its own distinctive mark that does
`not dilute or otherwise infringe upon TFC’s trademark. Also, any claims to copyright
`infringement are denied based upon the use of common jargon and expressions in the industry.
`
`Yours truly,
`
`LAW OFFICE OF
`
`PERRY M. FONSECA, P.C.
`
`/7»7~»~\
`
`Perry M. Fonseca
`
`cc::
`
`Karen Lozner, President, Fashion Classes of NJ
`
`

`
`Exhibit D
`
`

`
`LAW OFFICES OF
`
`TODD VVENGROVSKY, PLLC.
`285 Southfield Road, Box 585
`Calverton, New York 11933
`
`Tel (631) 727-3400
`Fax (631) 727-3401
`contact@twlegal.c:om
`Patent, Trademark, and Copyright Litigation
`
`via Federal Express
`
`May I, 2014
`
`Fashion Classes ol‘N.l', LLC.
`
`605 Luyster Place
`Morganville, NJ 07751
`Attn: Karen E. Lozner
`
`Ms. Lozner:
`
`Re: Trademark Infringement — The Fashion C lass®
`
`My olilice has been retained by The Fashion Class, LLC.
`refercnced matter.
`
`in regard to the above-
`
`As you are well aware, my client offers fashion design and sewing classes, as well as
`camps and birthday parties to children in the New York metropolitan area, under the trademark
`“THE FASHION CLASS." The Fashion Class. LLC. is the owner of all right, title, and interest
`to the trademark “‘Tl—l.E FASHION CLASS." My client has been using the mark since July, 2010,
`and secured United States Trademark Registration Number 4,316,207 on April 9, 2013 for the
`mark as used in connection with "Arranging and conducting special events for social
`entertainment purposes; Education services, namely, providing classes in the lield ofsewing."
`
`recently secured United States Trademark
`In addition, The Fashion Class, LLC.
`Registration Number 4,474,630 on January 28, 2014 for the mark as used in connection with
`“Printed instructional and teaching materials, namely,
`tutorials in the field of sewing and
`accompanied sewing pattems."
`
`My client has spent substantial time, money, and effort in promoting its trademark, and
`the mark has achieved significant commercial success, goodwill, and widespread customer
`recognition during the course of its nearly four years of usage. As such,
`the mark is of
`incalculable value to my client.
`
`As you are aware, my client put you on notice of trademark infringement Via letter dated
`June 27, 2013, to which counsel on your behalf responded with a delayed and inaccurate letter on
`August 15, 2013.
`
`

`
`Fashion Classes ofN.l. LLC.
`
`May 1, 2014
`Page 2 of3
`
`We have now learned that your company is still using the mark "FASHION CLASSES
`OF NJ" in connection with at least fashion and sewing classes - the identical services as my
`client. As such, any alleged distinction between the parties’ marks based on “NJ” is irrelevant. as
`New York and New Jersey are very closely related and the companies" respective marketing is
`geared towards the same consumers.
`
`ln fact, it is clear that you are now blatantly copying my client‘s entire bu.s'ine.s'.s‘ model,
`including its website and class exercises,
`in an effort to confuse consumers and ride on my
`client's goodwill in the New York metropolitan area. Your company’s new website and location
`named “Fashion Classes ofNew York " clearly confirms the above.
`
`Furthermore, as you are well aware, your company's trademark application number
`86/031,147 for the mark “FASHION CLASSES OF NJ” has been rejected due to likelihood
`of confusion with my client’s registration. Specifically,
`the trademark examiner made the
`following statements:
`
`refused because of a likelihood of
`“Registration of the applied-for mark is
`confusion with the mark in U .S. Registration No. 4316207. Trademark Act Section
`2(d),
`l5 U.S.C. §l0512(d)_;
`see TMEP §§l207.0l
`et seq.
`See the enclosed
`registration."
`
`“Applicant's mark differs from the registered mark in that applicants CLASSES is
`plural and applicant has added “OF NJ.“
`
`“Trademarks and/or service marks consisting of the singular and plural forms of the
`same term are essentially the same mark."
`
`“The mere addition of a term to a registered mark generally does not obviate the
`similarity between the marks nor does it overcome a likelihood of confusion under
`Trademark Act Section ?.(d).''
`
`“The marks are highly similar, and the first consideration in the analysis is met."
`
`“Although listed in different order, the services in the application and registration
`are the same. The services are closely related, and the second consideration in the
`analysis is met. Purchasers could mistakenly believe that the goods and/or services
`come from a common source."
`
`Therefore, your company’s mark clearly creates a likelihood of confusion with my
`clients trademark. As such, your usage of the mark constitutes Trademark infringement and
`unfair competition under applicable Federal and State laws, raising a presumption of damages to
`my client.
`
`

`
`Fashion Classes of NJ, LLC.
`
`May I. 2014
`Page 3 013
`
`Furthermore, since your company is using the mark with obvious knowledge of my
`client’s trademark, such constitutes willful infringement and unfair competition under applicable
`Federal and State laws, for which treble damages and attorneys‘ fees can be awarded. Indeed,
`any claim that you firs! began using the mark innocently is now irrelevant, as you have been
`willfully and intentionally infringing since at least June 27, 2013.
`
`Based on all of the foregoing, my client demands that an authorized representative of
`your company serve a signed, written communication upon this office, no later than ten (10) days
`from the date of this letter, stating that: (1) your company will immediately cease and desist all
`usage of the mark; and (2) disclosing the total revenues derived by your company in relation to
`the mark.
`
`Should your company fail to fully comply with these demands, my client may be forced
`to take legal action without further notice. Therefore. your prompt cooperation in resolving this
`matter amicably is appreciated.
`
`Sincerely,
`
`Todd Wengrovsky
`
`

`
`Exhibit E
`
`

`
`LAW OFFICE OF
`
`PERRY M FONSECA, PC
`12 HAMILTON COURT
`
`LAWRENCEVILLE, NEW JERSEY 08648
`
`PATENTS, TRADEMARKS AND COPYRIGHTS
`
`609-851-9998
`FAX: 609-912-0019
`
`pfonseca.law@verizon.net
`
`Perry M. Fonseca, Esq.
`NJ, NY and CA Bar
`
`Registered Patent Attorney
`
`VL4 FACSIMILE AT (631) 72 7-340] AND FIRST CLASS [MAIL
`
`May 11,2014
`
`Mr. Todd Wengrovsky
`Law Offices of Todd Wengrovsky, PLLC.
`285 Southfield Road, Box 585
`
`Calverton, NY 11933
`
`(631) 727-3400
`
`RE: Denial of Frivolous Claims of The Fashion Class, and Affirmative Statement
`
`of Fashion Classes of NJ ’s Rights
`
`Dear Sir:
`
`This is in response to your letter dated May 1, 2014 with respect to my client, Fashion
`Classes of NJ, LLC (hereinafter, “FCNJ”), and your client The Fashion Class LLC (hereinafter,
`“TFC”),
`regarding the mark “The Fashion Class®”, US Registration Nos. 4,316,207 and
`4,474,630 (hereinafter, the ‘“TFC mark”).
`
`Your letter states that our response to your client’s letter dated June 27, 2013 was “a
`delayed and inaccurate letter on August 15, 2013”. This summary is incorrect. In fact, although
`your client’s letter was dated June 27, 2013, it did not arrive until much later — in the last week of
`July, 2013. We responded immediately upon receipt on August 1, 2013. See, our letter dated
`August 1, 2013, specifically indicating that we would follow with a detailed response by August
`15, 2013, attached hereto as Attachment A.
`
`We also attach herewith as Attachment B a copy of our detailed response letter dated, and
`actually sent to your client, on August 15, 2014. Although you have referred to this letter as
`“delayed and inaccurate”, it was actually neither delayed nor inaccurate. We herein reaffirm
`everything stated in that letter, and further extend each and every of its assertions to cover your
`client’s new registration 4,474,630 for the same mark.
`
`It is noteworthy that although our timely reply of August 15, 2013 correctly informed
`your client that the TFC mark was not infringed by our client’s use of “Fashion Classes of NJ”
`(hereinafter “the FCNJ mark”), that TFC is a weak mark at best, that there has been no actual
`confusion between the TFC mark and FCNJ mark, that the FCNJ mark has been in use since
`early 2009, whereas TFC was only claimed to have been in use since July 1, 2010, that the two
`marks have been used concurrently for at least three (3) years without any known case of a
`confused consumer, and that there can be no trademark “dilution” where the mark is not “widely
`recognized by the general public of the United States”, your client apparently acquiesced with
`these observations by inexcusably delaying any response to our statements for over EIGHT (8)
`months. Clearly, it is your letter dated May 1, 2014 which is “delayed and inaccurate”.
`
`

`
`We consider the TFC mark to be descriptive and thus invalid. It is our client’s position
`that any reasonable review of the TFC mark by a competent authority would result in its
`cancellation for descriptiveness and/or other fundamental problems. For example, as stated
`above: FCNJ was IN ACTUAL USE at least ONE (1) YEAR BEFORE the TFC mark.
`
`In addition, even if the TFC mark were somehow able to survive a review, our client’s
`use of their business name, “Fashion Classes of NJ”, is a fair use of the temi. As you know,
`when a descriptive phrase is used in good faith for its primary meaning it is considered “fair use”.
`“Fashion Classes of NJ” is used with respect to the teaching of classes related to fashion, taught
`in the state of New Jersey — clearly a fair use.
`
`Your letter of May 1, 2014 demands that my client stop using their own business name.
`This is an attempt to put my client out of business, to which they will not accede. My client
`reserves the right to take any legal action necessary to preserve its rights without further notice.
`
`the statements, replies and
`To summarize, we repeat and include by reference all
`allegations of our letter dated August 15, 2014, and fL1I'tl’1CI' extend these to cover US Registration
`No. 4,474,630. Also, Fashion Classes of New Jersey and its President, Karen E. Lozner, denies
`each and every allegation set forth in your letter of May 1, 2014,
`including:
`trademark
`infringement, trademark dilution, unfair competition, use of a “very similar mark” to the TFC
`mark, trading on the name, goodwill or reputation of TFC, and violations of state or federal law,
`including the Lanham Act.
`
`9
`(.6
`In a related matter, your letter also asserted that my client is copying your client s entire
`business model, including its website and class exercises”. As our letter of August 15, 2013
`clearly informed your client, my client expressly denies any copyright infringement. You have
`not provided any example of actual copyright infringement beyond the vague: “business model,
`website and class exercises”. Any similarities between my client’s website, class exercises, etc.
`and your client’s are either the result of your client copying my client’s work, or the use of
`common jargon and expressions in the industry. Considering that my client has been teaching her
`fashion classes for more than a year prior to your client’s mark even being used, it is far more
`likely that your client copied my client’s business model. We demand at the very least a definite
`identification of something actually copied. Otherwise, we consider your vague allegations as
`thoroughly unsupported.
`
`If TFC decides to take any litigious action (e.g., filing of any federal lawsuit, proceedings
`with the USPTO, etc.) my client demands that TFC include a copy, in its entirety, of this letter
`and its attachments, and all previous letters. In addition, my client demands that if TFC takes any
`litigious steps that TFC provide proper service or a copy of such correspondence.
`
`Despite all this, my client believes it may be mutually advantageous for our clients to
`meet to discuss an amicable resolution to these matters. If your client would like to meet, please
`
`contact me to arrange such a meeting.
`
`Yours truly,
`
`LAW OFFICE OF
`
`PERRY M. FONSECA, P.C.
`
`Perry M. Fonseca
`
`PMF/ek
`
`cc:
`
`Karen Lozner, President, Fashion Classes of NJ, w/o Enclosures