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`CHRYSLER Bulmme
`4QS'LEXINGTON AVENUE
`
`_
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`ma’ 552"-‘$45’
`FACSIMILE
`<3*3i 3704345
`£212) 370*I645
`TELEX
`33733333:
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`MC! MAIL: 373-2961;
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`
`AND°:Ef,‘i”‘:,f,%‘;,E5
`JOHN F_"_Awl_Efi
`JOHN J. LQGHTCDN
`WRITE!-7t’S DIRECT amt. NUMBER
`
`(212) 973-5351
`
`
`
`
`
`‘ "'
`"
`_
`
`'
`or‘
`
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`
`.
`
`-
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`NEW
`
`May 30, 1990
`
`.
`
`_
`JOHN D. CANEJNI __
`CAR]. 9. CHIAFPII;
`-JERQHE F’. ECFLEMAN
`MA;fi.lD- QIAZ-fifildl III
`PEREZ £2. E!-IRECH
`MARK O. GERAGHTY
`DOUGLAS G. FALRHURSY
`9-UCHAEL F. GRIFHN
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`35
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`Law - em. “Wm
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`RICHARD KOO
`JAYNE M. KURZMAN
`HA1‘-my A. LCBIEN
`EVELYN J. LI’!-{MAN
`RICHARD H. LUTZ.
`VINCSNT M. HACGHIA
`ROBERT C. MILLER
`PHILIP D. PAKULA
`JAHE5 9- 0‘NEil-L
`ELLIOT PASKOFF
`ROBERT LLOYD RASKOPF
`
`JOHN PAUL Rama:-t:s.AN|::r-‘(A A. HIISMIR
`DANIEL‘: mu]
`DANFORTH W. ROGERS
`BARBARA M. EOTH
`RALFH K. 5!-1l1'H., JR.
`JAME5 S. SWIRE
`
`n.1mmsw.qn:
`
`'
`
`
`
`
`
`
`
`Commissioner of Patents
`and Trademarks
`
`Washington, D.C.
`
`202§1
`
`Re: opgosition No. 30,505
`
`To the Commissioner:
`
`Enclosed please find an original and two copies of
`0pposer‘s Motion on Eonsent to Extend Time to Respond to
`Motion with respect to the above-referenced opposition
`proceeding.
`
`Very truly yours,
`
`m-radaé&4____
`Sandra Edelman
`
`SE/tt
`_
`Enclosures
`cc(w/enc.): Ezra Sutton, P.A.
`
`1
`
`
`
`
`
`

`
`

`
`‘
`
`3i .s*si§ii%?t%‘:iI£i;.1-032
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`U‘,
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`E
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`(;‘
`\';é~5E
`__. ‘
`\\/'-F ’’
`” n re trademark application Of:
`BERKSHIRE FASHIONS,
`INC.
`
`Serial No.
`
`Filed:
`
`:
`
`:
`
`Law Div.
`
`Examiner
`
`:
`BERKSHIRE
`Hark:
`
`
`October 10, 1986
`
`Hon. Commissioner of Patents and Trademarks
`Hashington. D.C. 20231
`
`PRELIMINARY STATEMENT
`
`Sir:
`
`On September 11, 1981. applicant filed Application Serial
`
`No.
`
`321.675
`
`(now U.S. Trademark Registration No. 1,397,662.
`
`copy attached) to register the trademark BERKSHIRE for
`
`goods
`
`in
`
`Classes 18 and 25.
`
`The Examiner
`
`initially refused registration based on two
`
`prior registrations for BERKSHIRE, Registration No.
`
`509,696
`
`for
`
`BERKSHIRE
`
`as
`
`applied to leather, and Registration No. 598,238
`
`for BERKSHIRE as applied to women's
`
`and children's garhents.
`
`The Examiner,
`
`in a Final Action, withdrew the rejection based
`
`on Registration No. 509.696 but
`
`continued the
`
`rejection based
`
`on Registration No.
`
`598,238.
`
`To overcome this rejection,
`
`the
`
`goods in Class 25 were deleted from the application.
`
`and
`
`the
`
`application was published for
`
`registration directed to the
`
`goods in Class 18.
`
`Application Serial No.
`
`327,625 for BERKSHIRE was opposed
`
`by Hayar-Bsaton Corporation,
`
`the
`
`owner of Registration No.
`
`598,238 for BERKSHIRE by Assignment.
`
`The opposition was
`
`stayed
`
`
`
`

`
`pending
`
`the‘ outcome of a litigation in the courts involving the
`
`same parties.
`
`the same trademark. and
`
`the
`
`same products.
`
`The
`
`civil" action took place in the District Court for the District
`
`of New Jersey. and as a result of a jury trial held in April.
`
`1935.
`
`the
`
`jury found no infringement by defendant (applicant in
`
`opposition)
`
`of
`
`plaintiff‘:
`
`registration
`
`and
`
`common-law
`
`trademark rights in BERKSHIRE.
`
`Thereafter.
`
`applicant
`
`filed
`
`a motion
`
`to
`
`resume
`
`proceedings
`
`and
`
`for
`
`judgment.
`
`and
`
`on April 2.
`
`1986,
`
`the
`
`Trademark
`
`Trial
`
`and Appeal Board
`
`issued a decision
`
`(copy
`
`attached) granting applicant's motion
`
`and
`
`dismissing
`
`the
`
`opposition.
`
`Thus,
`
`at
`
`this
`
`point
`
`in time.
`
`the opposition and
`
`litigation have been disposed of.
`
`and Application serial No.
`
`has
`
`issued
`
`as
`
`U.S.
`
`Trademark Registration No.
`
`327.675
`
`1.397.662.
`
`(A' copy
`
`is
`
`attached
`
`of
`
`the
`
`Assignment
`
`of
`
`Application Serial No. 327.675 to the applicant herein.)
`
`At
`
`the
`
`time
`
`applicant deleted the goods in Class 25 from
`
`Application Serial No.
`
`327.675.
`
`applicant did
`
`so without
`
`prejudice to filing a new application directed to the goods in
`
`Class 25 (copy of
`
`interview record attached). which
`
`is
`
`the
`
`present application.
`
`It
`
`is
`
`submitted that
`
`this
`
`new application should be
`
`allowed
`
`for
`
`the
`
`reasons
`
`set
`
`forth in the Trademark Trial and
`
`Appeal Board's decision of April 2,
`
`1986,
`
`since
`
`the
`
`issue of
`
`likelihood of
`
`confusion was decided by the jury in applicant's
`
`favor.
`
`In this regard. for
`
`the
`
`convenience of
`
`the Examiner.
`
`also enclosed is a
`
`copy of Applicant's Second Reply Brief in
`
`Support
`
`of Berkshire's Motion
`
`for
`
`Judgment
`
`Dismissing
`
`
`
`
`
`

`
`
`
`opposition,
`
`aince
`
`it
`
`has
`
`attached to it
`
`a
`
`liat
`
`of
`
`trial
`
`exhibits, many of which
`
`involve
`
`the
`
`name
`
`goods
`
`as
`
`in this
`
`application.
`
`In
`
`fact, belts
`
`and
`
`Ilippers
`
`are
`
`the only new
`
`products in this application not included in prior Application
`
`Serial No.
`
`327.625.
`
`but
`
`since
`
`they are related to the other
`
`goods,
`
`they should also be allowed.
`
`Respectfully submitted.
`
`EZRA SUTTON: P.A.
`
`£53 ,(%:22‘..‘
`
`Reg. No. 25.770
`
`Plaza 9, 900 Route 9
`woodbridge. New Jersey 07095
`(201) 634-3520
`
`ES/jmt
`
`Enclosures
`
`---«V ‘¢4.x..'... L-Sic:
`
`-_
`
`
`
`

`
`

`
`UNITED STATES DISTRICT COURT
`DISTRICT OF NEW JERSEY
`-__--__-_--__-__--______-__-__----_-x
`
`MAYER-BEATON CORPORATION:
`
`Plaintiff,
`
`-against-
`
`Civil Action No.
`
`COMPLAINT
`
`nononnonIn-
`
`INC., and
`BERKSHIRE FASHIONS,
`BERKSHIRE HANDKERCHIEF C0.p IRC.:
`
`Defendants.
`
`---__---_--______-_______-__________x
`
`Plaintiff, by its attorneys, Weiss Dawid Fross zelnick
`
`& Lehrman, P.C., for its complaint alleges:
`
`JURISDICTION AND VENUE
`
`1.
`
`This is an action for trademark infringement
`
`under section 32(1) of the Lanham Trademark Act of 1946, 15
`
`U.S.C.
`
`S 1114(1); unfair competition under section 43(a) of the
`
`Lanham Trademark Act of 1946, 15 U.S.C. S 1125(a); and common
`
`law unfair competition. This court has jurisdiction of this
`
`action under
`
`the provisions of section 39 of the Lanham Act, 15
`
`U.S.C. $1121, 28 U.S.C. SS 1331, 1338 (a) and (b) and under
`
`principles of pendent jurisdiction.
`
`2.
`
`Venue lies with this court pursuant to 28 U.S.C.
`
`S 1391(b).
`
`THE PARTIES
`
`3.
`
`Plaintiff is a corporation organized and existing
`
`under the laws of the state of New Jersey, with its principal
`
`place of business in Wayne, New Jersey.
`
`4.
`
`Upon information and belief, defendants are
`
`corporations organized and existing under
`
`the laws of the State
`
`of New Jersey, with their principal places of business in
`
`Avenel, New Jersey. Upon information and belief, defendant
`
`Berkshire Fashions,
`
`Inc.
`
`is a subsidiary or division of, or
`
`is
`
`otherwise affiliated with, defendant Berkshire Handkerchief
`
`00., Inc.
`
`
`
`
`
`

`
`
`
`
`FACTS COMMON TO ALL CLAIMS FOR RELIEF
`
`Plaintiff's national1y—famous BERKSHIRE trademark.
`
`5.
`
`Plaintiff is a well-known manufacturer and
`
`distributor of garments, and currently manufactures and
`
`distributes blouses, panties,
`
`leotards, tights, stockings,
`
`pantyhose, anklets, socks and leg warmers; it currently
`
`manufactures, distributes, sells and advertises pantyhose,
`
`hosiery, socks, and leg warmers under
`
`the trademark BERKSHIRE.
`
`6.
`
`Plaintiff acquired all rights in and to the
`
`trademark BERKSHIRE by agreement dated as of December 17, 1976
`
`between plaintiff and Berkshire International corporation.
`
`Berkshire International Corporation was the assignee of the
`
`trademark BERKSHIRE from Berkshire Knitting Hills. Berkshire
`
`Knitting Hills commenced use of the BERKSHIRE trademark in
`
`interstate commerce in connection with women's and children's
`
`garments in 1906.
`
`7.
`
`Since at least as early as 1906 plaintiff and its
`
`predecessors have used the BERKSHIRE trademark in commerce in
`
`connection with a wide variety of garments,
`
`including hosiery,
`
`underwear, anklets, T—shirts, slips, panties, pantyhose,
`
`nightgowns, socks, stockings,
`
`leg warmers, and combination
`
`knitted outershirts and briefs. Garments sold by plaintiff and
`
`its predecessors have been of the highest quality and are
`
`generally recognized by the public as such. Plaintiff's and
`
`its predecessors‘ sales of garments under the BERKSHIRE
`
`trademark have been substantial. Plaintiff's BERKSHIRE
`
`garments are sold through department stores and specialty shops
`
`across the country. Plaintiff and its predecessors have
`
`advertised the BERKSHIRE trademark extensively in magazines of
`
`national circulation, as well as in various newspapers.
`
`8.
`
`Plaintiff is the owner of United States trademark
`
`registrations No. 534,470, registered December 5, 1950, for
`
`F I
`
`)
`
`
`
`
`
`

`
`
`
`SHEER SHEER BERKSHIRE for hosiery; No. 556,181, registered
`
`March 18, 1952, for BERKSHIRE and Design for women's
`
`fu11—fashioned hosiery; No. 598,238, registered November 16,
`
`1954,
`
`for BERKSHIRE for women's and children's garments,
`
`namely, hosiery, underwear, anklets, T—shirts, slips, panties
`
`and nightgowns: No. 774,642, registered August 4, 1964, for
`
`BERKSHIRE and Design for hosiery; and No. 968,694, registered
`
`September 18, 1973, for BERKSHIRE ACTIVE M5. for panty hose and
`
`stockings.
`
`Each registration is valid and subsisting, and
`
`Registration Nos. 556,181, 598,238, 774,642, and 968,694 are
`
`incontestable within the meaning of 515 of the Lanham Act, 15
`
`U.S.C. S1065. Copies of all of said registrations are annexed
`
`hereto as Exhibit A.
`
`9.
`
`As a result of the outstanding quality of the
`
`products sold under the BERKSHIRE trademarks by plaintiff and
`
`its predecessors, and their extensive sale and advertising of
`
`those products,
`
`the foregoing trademarks are among the
`
`best-known trademarks in the field of garments and have come to
`signify a great and valuable goodwill of plaintiff.
`Defendants‘ unlawful activities.
`
`10.
`
`Long after plaintiff and its predecessors
`
`commenced use of the BERKSHIRE trademarks, defendants have
`
`asserted a right to use the trademark BERKSHIRE in connection
`
`with,
`
`inter alia, garments, and have filed an application in
`
`the United States Patent and Trademark Office to register the
`
`trademark BERKSHIRE in connection with,
`
`inter alia, garments.
`
`Defendants‘ purported use of the BERKSHIRE mark is without
`
`permission or authorization of plaintiff and without
`
`compensation to plaintiff.
`
`Upon information and belief,
`
`defendants had actual or contructive notice of plaintiff's use
`
`of the BERKSHIRE mark prior to commencing their unlawful use of
`
`the mark.
`
`
`
`

`
`11.
`
`on February 19, 1982, plaintiff's counsel wrote a
`
`letter to defendant Berkshire Handkerchief Co., Inc.,
`
`requesting that it cease and desist in its use of the
`
`designation BERKSHIRE in connection with wearing apparel.
`
`Defendants have refused to do so.
`
`FIRST CAUSE OF ACTION FOR TRADEMARK
`INFRINGEMENT PURSUANT TO SECTION 32(1)
`0? THE LANHAM TRADEMARK ACT 0? 1946
`
`12. Defendants‘ use of the trademark BERKSHIRE in
`
`connection with the distribution, advertising and sale of
`
`garments is likely to cause confusion, mistake or to deceive.
`
`Defendants have thereby infringed plaintiff's rights in its
`
`registered BERKSHIRE trademarks.
`
`13. Defendants‘
`
`infringing conduct has caused and
`
`will continue to cause irreparable injury to plaintiff unless
`
`enjoined by this court. Plaintiff has no adequate remedy at
`law.
`
`SECOND CAUSE OF ACTION FOR UNFAIR
`COMPETITION PURSUANT TO SECTION 43(a)
`OF THE LANHAM TRADEMARK ACT OF 1946
`
`14. Plaintiff's trademark BERKSHIRE, when used in
`
`connection with garments,
`
`is arbitrary and distinctive.
`
`Moreover, after decades of use, its BERKSHIRE trademarks have
`
`become inextricably associated in the mind of the public with
`
`garments.
`
`15. Defendant's subsequent use in commerce of
`
`BERKSHIRE in connection with garments constitutes a false
`
`designation of origin, and a false representation to the public
`
`and the trade that plaintiff is the manufacturer of, or
`
`otherwise associated with, defendants‘ goods, when in fact it
`
`is not.
`
`. __1. -....¢J:;-...- _.r_-'.
`
`7 .
`
`

`
` .
`
`§
`
`1
`
`16. Defendants‘ unfair competition has caused and
`
`will continue to cause irreparable injury to plaintiff, unless
`
`enjoined by this court. Plaintiff has no adequate remedy at
`
`law.
`
`THIRD CAUSE OF ACTION FOR
`COMMON LAW UNFAIR COMPETITION
`
`15. Plaintiff and its predecessors have built
`
`considerable good will in connection with the manufacturing and
`
`marketing of garments under the BERKSHIRE trademarks, which
`have come to symbolize garments finding their origin in
`
`plaintiff.
`
`18. Upon information and belief, defendants, having
`
`7 knowledge of the BERKSHIRE trademarks for garments, have sold
`
`and are selling garments under the BERKSHIRE mark.
`
`As a
`
`result, defendants have passed off their goods as originating
`
`with plaintiff, and have wrongfully associated their products
`
`and business with plaintiff, resulting in deception and
`
`confusion among the public and the trade.
`
`19.
`
`By virtue of such unfair competition, defendants
`
`have been unjustly enriched, and plaintiff has been deprived of
`
`the value of its trademarks and goodwill.
`
`20. Defendants‘ unfair competition has caused and
`
`will continue to cause irreparable injury to plaintiff, unless
`
`enjoined by this court. Plaintiff has no adequate remedy at
`law.
`
`WHEREFORE, plaintiff demands judgment as follows:
`
`A.
`
`For an injunction (i) enjoining defendants,
`
`their
`
`officers, agents, servants, employees, successors, assigns and
`
`all persons in active concert or participation with any of
`
`them,
`
`from using the trademark,
`
`trade name or word BERKSHIRE,
`
`or any trademark,
`
`trade name or word that is confusingly
`
`similar to BERKSHIRE,
`
`in any manner or form, either alone or in
`
`-5-
`
`
`
`

`
`
`
`combination with any other designation, on or
`
`in connection
`
`with garments, or on any label, packaging, advertising,
`
`promotion or display in connection with the manufacture,
`
`distribution, sale, advertising, or display of garments, and
`
`from otherwise competing unfairly with plaintiff; (ii)
`
`directing defendants to deliver up for destruction or other
`
`disposition all goods,
`
`labels, packages, catalogues, brochures,
`
`advertisements, promotions, and displays, and the negatives,
`
`artwork and other materials and means for making the foregoing,
`
`in the custody or possession, or under the control of,
`
`defendants, which bear the BERKSHIRE mark, or any reproduction,
`
`copy, colorable imitation, or counterfeit of said mark, or
`
`which otherwise infringe any of plaintiff's trademarks or
`
`contain any false designation of origin or false
`
`representation; and (iii) directing defendants to file with the
`
`court and serve upon plaintiff within thirty days after service
`
`of the injunction demanded above a report
`
`in writing under oath
`
`setting forth in detail the manner and form in which defendants
`
`have complied with the injunction.
`
`B.
`
`For an award to plaintiff of the damages
`
`sustained by it as a result of defendants‘
`
`trademark
`
`infringement and unfair competition, and, pursuant
`
`to S35 of
`
`the Lanham Act, 15 U.S.C. 51117,
`
`that defendants be ordered to
`
`pay plaintiff three times the amount of such damages.
`
`C.
`
`For an award of such exemplary damages as will be
`
`sufficient to deter any willful conduct on the part of
`defendants.
`
`D.
`
`For an award of all profits realized by
`
`defendants from their violation of $43(a) of the Lanham Act,
`
`and their unfair competition.
`
`E.
`
`For an order requiring defendants to withdraw
`
`from the records of the United states Patent and Trademark
`
`Office their trademark application Serial No. 327,675 for
`
`BERKSHIRE and, pursuant to 537 of the Lanham Act, 15 U.S.C.
`
`-5-
`
`
`
`

`
`
`
`S1119, denying registration to defendants for such mark.
`
`F.
`
`For an award to plaintiff of the costs of this
`
`action together with reasonable attorney's fees.
`
`G.
`
`For such other and further relief as the court
`
`may find just and proper.
`
`Dated:
`
`New York, New York
`July]; , 1982
`
`WEISS DAWID FROSS ZELNICK
`8 LEHRHAN, P.C.
`
`By:
`
`€;
`t e Firm
`em er o
`A
`Attorneys for Plaintiff
`750 Third Avenue
`New York, NY
`10019
`(212) 953-9090
`
`WILLIAMS, CALIRI, MILLER 5 OTLEY
`
`By:
`
`irm
`e
`em er o
`Attorneys for Plaintiff
`1428 Route 28
`Wayne, New Jersey
`(201) 694-0300
`
`07470-5394
`
`
`
`

`
`
`
`Registered Dec. 5, 1950
`
`Registration No. 534,470"
`
`SUPPLEMENTAL REGISTER A;-HDAVIT SEC_ 8
`‘Trade-Mark
`ACCEPTED
`
`
`
`UNITED STATES PATENT OFFICE
`
`Berkshire Knitting Mills, Wyomissing and
`Reading, Pa.
`
`Act of 1946
`
`Original filed. act of 1905. April 12. 1947: amended
`to application under net of 1916. Principal Reg-
`ilier, April 20. 1948; amended in Supplemental
`Register. June 5. 1950, Serial No. 520.547
`
`Sm,
`
`gm’ Berkshires
`
`'
`
`STATELIENT
`Berkshire Knitting Mills. a corporation duly or-
`the States which may lawfully be regulated by
`Congress on July 12. 1946, and has been in law-
`ganized under the laws of the State oi Pennsyl-
`vania. located and doing business at Wyomissing.
`ful use in such commerce upon or in connection
`Pennsylvania, post omce address Box 1259. Read-
`with the goods for the year preceding the filing
`ing, Pennsylvania. has adopted and is using the
`0! this application. Applicant.
`is the owner or
`trade-mark shown in the accompanying draw-
`Registration No. 305,132. Berkshire Knitting Mills.
`registered August 1. 1933.
`ing. for H0.SiI-IRY. in Class 39, Clothing. and
`presents herewith five specimens showing the
`The trade-marl: is applied or utilized to said
`trade-mark as actually used in connection with
`goods, or the package containing the same or by
`such goods, and requests that the same be reg-
`including with the goods a printed label 0 . which
`the mark is shown.
`istered in the United States Patent Omce on the
`Supplemental Register in accordance with the
`BERKSHIRE KNI'I'l‘ING MILLS.
`act of July 5, 1946. The mark was first used on
`By JOHN E. LIVIZNGO-OD,
`Vice President.
`July 12, 1946, and nrst used in commerce between
`
`
`
`:43
`_
`, .
`,.i»"E'H‘_;;-
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`.
`_:.-‘.151-v“-‘
`
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`
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`
`ing. UL ’_-_‘,.I'’.
`
`Registered Mar. 18. 1952
`
`Registration No. 555,181
`
`fa.“-FD.’-:‘.='2T sec. 8
`ACCEPTED
`
`PRINCIPAL REGISTER
`
`Trade-Mark
`
`L"-FiD.'WiT SEC. 15
`RECEN:-_'
`.5‘ ~52 7-5 7
`
`UNITED STATES PATENT OFFICE
`
`Berkshire Knitting Mills. Reading and
`Wyomissing, Pa.
`
`Act oi’ 1946
`
`Application September 15. 1949. Serial No. 584.850
`
`Berkshire
`
`.
`
`._
`
`‘
`
`STATEMENT
`gress on April 29, 1949. Applicant is the owner
`of the Iollowing registrations: No. 211.627, Berk-
`shire Knitting Mills. Wyomissing, Reading, Penn-
`sylvania. registered April 13. 1926, and renewed
`to same: No. 305,132, Berkshire Knitting Mills.
`Wyomissing. Reading, Pa.. registered August 1.
`1933: No. 305.133. Berkshire Knitting Mills. Wyo-
`missing. Reading. Pa., registered August 1, 1933;
`No. 306,565, Berkshire Knitting Mills. Wyomis-
`sing. Reading. Pa., registered September 26, 15.3;
`No. 318.393, Berkshire Knitting Mills. Wyomis-
`sing. Reading. 1321.. registered August 21, 1934;
`No. 322,323. Berkshire Knitting Mills, Wyornis-
`sing’. Reading. Pa., registered March 5. 1935; No.
`386.183, Berkshire Knitting Mills, Wyornissing.
`Reading. Pa.. registered March 25, 1941; and No.
`415,808, Berkshire Knitting Mills. Wyomlssing.
`Reading. Pa., registered August 14, 1945.
`
`Berkshire Knitting Mills. a corporation duly
`organized under the laws of the State or Pennsyl-
`vania. located at Wyomissing, post omce. address
`Box 1259. Reading. Pennsylvania. and doing busi-
`ness at Wyomissing. Pennsylvania, has adopted
`and is using the trade-mark shown in the ac-
`companying drawing. {or WOMEN'S FULL
`FASHIONED HOSIERY, in Class 39, Clothing.
`and presents herewith five specimens showing
`the trade-mark as actually used in connection
`with such goods, the trade-mark being applied
`to the goods. containers therefor or to other mat-
`ter associated with the goods in trade and re-
`quests that the same be registered in the United
`States Patent Oiiice on the Principal Register in
`accordance with the act or July 5. 1946. Appli-
`cant disclaims the representation or the stock-
`ings apart irom the mark shown except insofar
`as they are shaped to form the letter "B."
`The trade-mark was first used on April 29.
`
`19-19, and flrst used in commerce between the
`States which may lawfully be regulated by Con-
`
`BERKS]-[IRE KNTPITNG MILLS.
`By FERDINAND K. THUN.
`President.
`
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`PRINCIPAL REGISTER
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`Trade-Mark
`821’. No. 550,345, Ila! Jib I‘, 1953
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`Berkshire Knitting Mills (Pennsylvania corporation)
`“’yomI5sing, Pa,
`
`F01’: WOMEN'S AND CHILDREN'S GARMENTS—-
`NAMELY. HOSIERY. UNDERWEAR. ANKLETS.
`T-SHIRTS. SLIPS. PANTIES. AND NIGHTGOWNS-—
`in CLASS 39.
`First used I906. and in commerce I906.
`Owner of trademarks shown in Reg. Nos. 166,692.
`110,332. and Reg. Nos. 158.849. 2ll.627. 305.132.
`305.133. 3oe,sss. 315,393, 322.323, 335.133, 415.303,
`514,470. ma $56,131.
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`774,642
`Registered Aug. 4, 1964
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`PRINCIPAL REGISTER
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`Trademark
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`Ser. No. 176380. filed Sept. 9, ‘I963
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`BERKSHIREB
`
`Bcrkshire International Corporation (Pennsylvania cm-
`poralion)
`Wyumissing, Pa.
`
`For: 1-IOSIERY. in CLASS 39.
`First use Aug. 8. I963; in commerce Aug. 8. I963.
`Owner of Reg. Nos.
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`968,694
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`PRINCIPAL REGISTER
`
`Trademark
`
`Set. No. 431.229. filed July 31. I972
`
`BERKSHIRE ACTIVE MS.
`
`Berkshire lntcrnnlional (‘orporminn (Pcnn\'yIvani:u tur-
`poration)
`801 Hill Ave.
`W_vomi.~'sing. Reading. Pa.
`
`1960}
`
`For: P.-\NTY HOSE AND STOCKINGS.
`39 um. CL. 25).
`First us: June 30. I972: in commerce June 30, 1972.
`Owner of Reg. Nos. 352.563. 774,642, and others.
`
`in CLASS
`
`

`
`

`
`
`
`UNITED STATES DISTRICT COURT
`DISTRICT OF NEW JERSEY
`
`‘
`
`MAYER-BEATON CORPORATION,
`
`Plaintiff,
`
`U.
`
`, Civil Action No.
`2
`
`82-2269
`
`INC., and
`BERKSHIRE FASHIONS,
`BERKSHIRE HANDKERCHIEF CO.,
`INC._
`
`Judge Harold A. Ackerman
`
`Defendants.
`
`ANSWER AND COUNTERCLAIH
`
`Defendants,
`
`by its attorneys, answer
`
`the Complaint as
`
`follows:
`
`1.
`
`Defendant admits
`
`the allegations of paragraph 1,
`
`except with regard to jurisdiction, since Berkshire Handker-
`Inc. has been merged into Berkshire Fashions,
`
`chief Co.,
`
`Inc.
`
`2;
`
`Defendant admits that venue is proper with regard
`
`"to defendant, Berkshire Fashions,
`
`Inc.
`
`3.
`
`Defendant
`
`is without
`
`knowledge or
`
`information
`
`sufficient
`
`to form a belief as to the truth of the allega-
`
`tions of paragrah 3.
`
`4.
`
`Defendant, Berkshire Handkerchief Co.,
`
`Inc., has
`
`been merged
`
`into Berkshire Fashions,
`
`Inc.,
`
`and Berkshire
`
`Fashions, ‘Inc.
`
`is
`
`a corporation organized and existing
`
`under
`
`the laws of the State of New Jersey, but denies that
`
`it has a principal place of business in Avenel, New Jersey.
`
`

`
`
`
`5.
`
`sufficient
`
`Defendant
`is
`orm a belief as to the truth
`
`without knowledge
`
`to f
`
`or
`
`information
`
`of the allega-
`
`and
`
`6.
`
`As
`
`admits
`
`that
`
`to paragraph 10 of
`ted a right
`
`it has asser
`
`the Complaint, defendant
`emark
`
`to use the trad
`handker—
`
`ladies‘ _scarves,
`
`BERKSHIRE
`
`in connection with
`
`that it has
`and admits
`and ladies outer clothing,
`ication in the U.S. Patent and Trade-
`trademark BERKSHIRE in connec-
`es that it requires the
`to
`use
`the
`
`chiefs,
`
`ma
`
`t p
`
`rk Office to register the
`ion with such goods. Defendant deni
`authorization
`of plaintiff
`or
`ew of
`the fact that defenda
`in vi
`g the BERKSHIRE trademark and trade name since the
`since the 19505 on clothing,
`
`ermission
`
`nt has
`
`BERKSHIRE trademark,
`
`been usin
`
`l9h0s for ladies‘
`and since l967 for ladies‘ outer garments.
`
`accessories,
`
`s of paragraph ll
`
`through 20 of the Complaint.
`
`r for a judgment, defen-
`9. Answering plaintiff's praye
`t it has infringed any trademark rights of
`titled to
`
`dant denies tha
`
`any
`
`attorneys‘
`damages,
`any
`other or further relief.
`
`...__._._..___.—_§_
`
`

`
`
`
`ll
`
`AFFIRMATIVE DEFENSES
`10. Plaintiff's rights in the trademark BERKSHIRE are
`limited to undergarments,
`such as hosiery, pantyhose, and
`related accessories. Beyond such accessories, plaintiff's
`rights in the trademark BERKSHIRE do not extend to outer
`garments. Since plaintiff has
`no usage of
`the BERKSHIRE
`trademark on outer
`garments,
`it
`has
`no
`registered or
`common-law trademark rights as
`to such goods. Since defen-
`dant has had and continues
`to have use of
`the trademark
`BERKSHIRE
`on outer garments, prior
`to any such use by
`plaintiff, defendant has
`common-law rights in and is the
`rightful
`owner
`of
`the
`trademark BERKSHIRE as
`to outer
`
`garments.
`
`In 1980, plaintiff's Registration No. 9S9,h56 for
`11.
`the trademark BERKSHIRE was canceled by the U.S. Patent and
`Trademark Office for non—use of
`the mark on ladies’ sports-
`in particular,
`a knitted outer shirt and brief.
`Two years of non-use of a
`trademark are presumed to be an
`abandonment
`of
`the
`trademark under
`the Lanham Act,
`and
`accordingly, plaintiff has abandoned any trademark rights
`it may have had with regard to the trademark BERKSHIRE as
`applied to such outer garments.
`
`12. Plaintiff, andlor its predecessors, had knowledge
`defendant's
`use
`of
`the
`trademark
`and
`trade
`name
`of
`BERKSHIRE for many years and never notified defendant of
`plaintiff's belief
`that
`it was entitled to rights in the
`
`

`
`
`
`field of outer garments. Such inaction by plaintiff con-
`stitutes laches and a waiver of any rights which plaintiff
`may have had with regard to the trademark BERKSHIRE in the
`field of outer garments.
`
`failed to take
`For many years, plaintiff has
`13.
`action against
`the predecessor of defendant or any third
`parties using the mark BERKSHIRE,
`and
`such inaction by
`plaintiff constitutes an acquiescence. and/or
`an estoppel
`with regard to asserting trademark rights in the trademark
`BERKSHIRE for outer garments.
`
`'4
`4
`n
`f
`
`E
`
`Inc., by its attorneys,
`
`COUNTERCLAIM
`Defendant, Berkshire Fashions,
`alleges:
`1.
`
`Defendant—counterclaimant, Berkshire Fashions,
`Inc.,
`is
`a corporation organized and existing under
`the
`laws of
`the State of New Jersey, having its principal place
`of business at
`930 New Durham Road, Edison, New Jersey
`08817.
`On
`information and belief,
`defendant-respondent,
`Mayer-Beaton Corporation,
`is
`a corporation organized and
`existing under
`the laws of
`the State of New Jersey, with
`its principal place of business in Wayne, New Jersey.
`
`This is an action for declaratory judgment as to
`2.
`plaintiff's and defendant's respective rights in the trade-
`; mark BERKSHIRE,
`and this Court has
`jurisdiction by virtue
`II
`of
`28 U.S.C. Section 2201
`and Sections 1331,
`1338,
`venue is proper under l39l(cJ.
`
`and
`
`

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`
`3.
`
`Defendant, Berkshire Fashions,
`
`Inc.,
`
`and
`
`its
`
`predecessor, Berkshire Handkerchief Co.,
`
`Inc., have used
`
`the trade name and trademark BERKSHIRE since the l9h0s on
`
`accessories,
`
`such as
`
`ladies‘
`
`scarves and handkerchiefs.
`
`In
`
`the 19505, defendant expanded its usage of
`
`the trademark
`
`BERKSHIRE into garments,
`
`such as boy's pants
`
`and robes.
`
`Still further,
`
`in 1967, defendant began using the trademark
`
`BERKSHIRE on ladies’ outer garments,
`
`such as nylon tops,
`
`lace tops,
`vests.
`
`sweaters, pants, body suits,
`
`ladies‘ capes, and
`
`a.
`
`As a result of defendant's long and continued use
`
`of
`
`the trade name and trademark BERKSHIRE, for almost forty
`
`(no) years,
`
`as
`
`applied to ladies‘
`
`accessories,
`
`such as
`
`scarves
`
`and
`
`handkerchiefs,
`
`defendant
`
`has
`
`unquestioned
`
`common—1aw trademark rights in the trade name and trademark
`
`BERKSHIRE.
`
`5.
`
`As a result of defendant's long and continued use
`
`of
`
`the
`
`trademark and trade name BERKSHIRE as applied to
`
`outer garments, commencing in the 19505 on boy's pants and
`
`robes,
`
`as well as
`
`its use since 1967 on ladies‘ outerwear
`
`garments, defendant has unquestioned common—law trademark
`
`rights
`
`in the BERKSHIRE
`
`trademark as
`
`applied to outer
`
`garments.
`
`

`
`
`
`6.
`
`Defendant's
`
`common-law trademark rights
`
`in the
`
`trademark
`
`BERKSHIRE,
`
`as
`
`applied
`
`to
`
`outerwear
`
`items,
`
`preceded plaintiff's first usage of the trademark BERKSHIRE
`
`on such outerwear items on November 16, 1971, which use has
`
`now been abandoned by plaintiff.
`
`7. Plaintiff and/or its predecessors had knowledge of
`
`defendant's use of
`
`the trademark and trade name BERKSHIRE
`
`for many years, and although they knew of such usage,
`
`they
`
`took no action or sent no notice to defendant with regard
`
`to advising defendant
`
`that plaintiff contended it had trade-
`
`mark
`
`rights
`
`in outerwear clothing,
`
`even though plaintiff
`
`had no actual usage’ of
`
`the
`
`trademark BERKSHIRE on
`
`such
`
`goods. Such inaction by plaintiff, and/or its predecessors,
`
`constitutes acquiescence, waiver,
`
`laches, and/or estoppel
`
`with regard to any trademark rights plaintiff may have had
`
`with regard to expanding their
`
`rights
`
`to the trademark
`
`BERKSHIRE into the field of outer clothing.
`
`8.
`
`Plaintiff
`
`discontinued
`
`use
`
`of
`
`the
`
`trademark
`
`BERKSHIRE on knitted outershirts and briefs shortly after
`
`its first usage in 1971 which constituted an abandonment of
`
`this mark for outer garments.
`
`HHEREFORE. defendant prays for entry of a judgment:
`
`A. Declaring that plaintiff's trademark rights in the
`
`trademark EERKSHIRE are limited to hosiery, pantyhose, and
`
`related accessories and undergarments;
`
`

`
`1.
`
`k_.
`
`‘F
`
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`
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`Declaring that defendant's trade name and trade-
`B.
`rights
`in the
`trademark BERKSHIRE
`include
`ladies‘
`
`mark
`
`scarves and handkerchiefs,
`
`and that
`
`such common-law trade-
`
`mark rights extend from the l9h0s to the present
`
`time;
`
`mark
`
`rights
`
`in the
`
`trademark BERKSHIRE with regard to
`
`Declaring that defendant's trade name and trade-
`C.
`outerwear clothing is based on actual use commencing in the
`l9SOs and that such common-law trademark rights continue to
`the present
`time;
`
`D.
`
`Declaring that defendant's trade name and trade-
`
`mark
`
`rights
`
`in BERKSHIRE with regard to ladies‘
`
`outer
`
`commenced
`
`in 1967
`
`and continue to the present
`
`garments
`
`time;
`
`For an injunction enjoining plaintiff from using
`E.
`the trademark BERKSHIRE on outer garments or
`scarves and
`handkerchiefs and thereby improperly and unfairly competing
`
`with defendant;
`
`F.
`
`For an injunction enjoining plaintiff from oppos-
`
`ing defendant's trademark application Serial No. 327,675 to
`register
`the BERKSHIRE trademark in the U.S. Patent and
`
`Trademark Office.
`
`G.
`
`For an award to defendant of
`
`the costs of
`
`this
`
`action together with its attorneys fees; and
`
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`
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`
`For any further relief which the Court may deem
`H.
`just and proper under the circumstances.
`
`INC.
`
`BERKSHIRE FASHIONS,
`By its attorneys
`HEINSTEIN & SUTTON, P.C.
`Plaza 9, 900 Route 9
`woodbridge, New Jersey 07095
`(201) 63 -3520
`
`4°
`By
`
`
`
`Dated:
`
`September 9, 1982
`
`CERTIFICATE OF SERVICE
`
`I, EZRA SUTTON, certify that
`
`the foregoing ANSWER
`
`AND COUNTERCLAIM was served by first-class, postage prepaid
`
`mail on this 9th day of September, 1982 upon the attorneys
`for plaintiff,
`namely, Richard Lehv, Esq., Weiss Dawid
`
`Fross Zelnick & Lehrman, P.C., 750 Third Avenue, New York,
`
`‘ New York 10019 and Williams, Caliri, Miller & Otley, 1428
`
`Route 28, Wayne, New Jersey 07fi70.
`
`
`
`

`
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