TT
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the matter of Application Serial No. 76/242,445
`Published for Opposition in the OFFICIAL GAZETTE of November 26, 2002
`
`STUSSY, 1NC.,
`Opposer,
`
`v.
`
`KYU HO SHIN,
`Applicant.
`
`Opposition No.:
`
`NOTICE OF OPPOSITION
`
`Stussy, Inc. (“Opposer”), a California corporation having its principal place of business at
`
`17426 Daimler Street, Irvine, California 92614, believes it will be damaged by registration of the
`
`device mark SS shown in Serial No. 76/242,445 in Classes 24 and 26, filed by Kyu Ho Shin
`
`(“Applicant”), and hereby opposes the same.
`12/31/2002 KGIBBDHS 00000174 76242445
`
`01 FC:640E
`
`300.00 OP
`
`As grounds for this Opposition, it is alleged:
`
`On or about April 18, 2001, Applicant filed an intent to use application with the
`1.
`United States Patent and Trademark Office to register the SS device mark (consisting of two
`back-to-back letter “S”s)(hereinafter “Applicant’s Mark”) for “covers of textile for furniture and
`
`household items, namely, covers for laundry machines, curtains of textile or plastic (except for
`
`shower curtains), television covers, piano covers, quilts, mattress covers, covers, bed blankets,
`
`bed covers, cushion covers; handkerchiefs of textile, towels of textile; silk fabric, cotton fabric,
`
`woolen cloth, artificial sweat fabric, embroidery fabric, synthetic fiber fabric, mixed hempen
`
`fabric, chemical fiber union cloth” in International Class 24; and for “Shoe ‘accessories, namely,
`
`shoe hooks, shoe buckles, shoe ornaments (not of precious metal), laces (except for embroidered
`
`0488l38.DOC
`
`1
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the matter of Application Serial No. 76/242,445
`Published for Opposition in the OFFICIAL GAZETTE of November 26, 2002
`
`STUSSY, 1NC.,
`Opposer,
`
`v.
`
`KYU HO SHIN,
`Applicant.
`
`Opposition No.:
`
`NOTICE OF OPPOSITION
`
`Stussy, Inc. (“Opposer”), a California corporation having its principal place of business at
`
`17426 Daimler Street, Irvine, California 92614, believes it will be damaged by registration of the
`
`device mark SS shown in Serial No. 76/242,445 in Classes 24 and 26, filed by Kyu Ho Shin
`
`(“Applicant”), and hereby opposes the same.
`12/31/2002 KGIBBDHS 00000174 76242445
`
`01 FC:640E
`
`300.00 OP
`
`As grounds for this Opposition, it is alleged:
`
`On or about April 18, 2001, Applicant filed an intent to use application with the
`1.
`United States Patent and Trademark Office to register the SS device mark (consisting of two
`back-to-back letter “S”s)(hereinafter “Applicant’s Mark”) for “covers of textile for furniture and
`
`household items, namely, covers for laundry machines, curtains of textile or plastic (except for
`
`shower curtains), television covers, piano covers, quilts, mattress covers, covers, bed blankets,
`
`bed covers, cushion covers; handkerchiefs of textile, towels of textile; silk fabric, cotton fabric,
`
`woolen cloth, artificial sweat fabric, embroidery fabric, synthetic fiber fabric, mixed hempen
`
`fabric, chemical fiber union cloth” in International Class 24; and for “Shoe ‘accessories, namely,
`
`shoe hooks, shoe buckles, shoe ornaments (not of precious metal), laces (except for embroidered
`
`0488l38.DOC
`
`1
`
`
`
`
`
`3:
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`laces); hair ribbons, hair pins, barrettes; belt ornaments, namely, pins, spangles; buckles and
`
`brooches for clothing; ornamental ribbons, hair grips and hair bands; buttons, hooks and snaps
`
`for clothing” in International Class 26.
`
`2.
`
`Since at least as early as October 18, 1989, Opposer has been using the SS Link
`
`device mark (consisting of two back-to-back and interlocking letter “S”s) (hereinafter “SS Link
`
`Mark”) on a variety of goods and services as listed on the registrations listed below, among
`
`others goods and services:
`
`Class
`
`Reg. No.
`
`Reg. Date
`
`Goods (partial list)
`
`06
`09
`14
`16
`18
`19
`20
`22
`24
`25
`26
`28
`
`2,426,975
`2,399,916
`2,515,116
`2,450,863
`2,343,524
`Califomia 105461
`2,444,295
`California 105994
`2,590,655
`2,225,736
`2,450,864
`2,426,974
`
`02/06/01
`10/31/00
`12/04/01
`05/15/01
`04/18/00
`08/27/99
`04/17/01
`02/02/00
`07/09/02
`02/23/99
`05/15/01
`02/06/01
`
`Metal products
`Sunglasses, CDs
`Jewelry
`Printed matter, stickers, etc.
`Bags, luggage, etc.
`Foam and plastic signs
`Signs
`Bags for storage
`Labels
`Clothing, headwear
`Belt buckles
`Toys
`
`3.
`
`Specifically, Opposer is the owner of U.S. Registration Nos. 2,590,655 in
`
`International Class 24, 2,225,736 in International Class 25, and 2,450,864 in International Class
`
`26, all for the SS Link device. Attached hereto as Exhibit “A” are copies of these registrations.
`
`4.
`
`There is no issue as to priority. App1icant’s priority date for his intent-to-use
`
`application is no earlier than the filing date of the application, April 18, 2001. Opposer’s priority
`
`dates for the registrations are: Class 24: August 4, 2000 (the date of first use is at least as early
`
`as August 1997); Class 25: January 6, 1998 (the date of first use is at least as early as January 1,
`
`1992), and Class 26: March 2, 2000 (the date of first use is at least as early as 1989). Since long
`
`0488l38.DOC
`
`2
`
`
`
`
`
`prior to Applicant’s filing of the application for Applicant’s Mark (no use of Applicant’s Mark
`
`having been alleged by Applicant), Opposer has made substantial and continuous use of the SS
`
`Link Mark in interstate, foreign, and intrastate commerce on and in connection with the
`
`advertising, promotion, and sale of its goods, since as early as October 18, 1989.
`
`5.
`
`By virtue of the aforesaid advertising, promotion, and sales, and by virtue of the
`
`excellence of its products, Opposer’s SS Link Mark has come to represent exceedingly valuable
`
`goodwill owned by Opposer.
`
`6.
`
`The goods on which Opposer uses its SS Link Mark and the goods for which
`
`Applicant seeks to register Applicant’s Mark are closely related, if not identical, and are sold
`
`through the same channels of trade and to the same class of purchasers.
`
`7.
`
`Opposer’s SS Link Mark and Applicant’s Mark are confusingly and substantially
`
`similar.
`
`8.
`
`Use by Applicant of Applicant’s Mark will be likely to cause confusion, mistake,
`
`or deception with Opposer’s SS Link Mark, and result in the belief that Applicant or Applicant’s
`
`goods are in some way legitimately connected with, sponsored by, or approved by Opposer,
`
`resulting in damage and injury to Opposer. Persons familiar with Opposer’s SS Link Mark
`
`would be likely to buy Applicant’s goods as and for a product made and sold by Opposer. Any
`
`such confusion in trade inevitably would result in loss of sales to Opposer. Furthermore, any
`
`defect, objection, or fault found with Applicant’s products marketed under Applicant’s Mark
`
`would necessarily reflect upon and seriously injure the reputation that Opposer has established
`
`for its products merchandised under Opposer’s SS Link Mark.
`
`0488138.DOC
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`3
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`9.
`
`Any use Applicant has made or may make of Applicant’s Mark, is and will be
`
`without Opposer’s consent or permission.
`
`10.
`
`Applicant has no good faith intention to use Applicant’s Mark. Instead, Applicant
`
`filed and continues to prosecute this trademark application in bad faith, as is clear from a letter
`
`that Applicant wrote to Opposer on about May 9, 2002. Applicant sent the letter to Opposer
`
`(before Opposer even contacted Applicant). In Applicant’s letter, Applicant proposes that “you
`
`[Opposer] and me together make a world first famous fashion masterpiece by grafting well the
`
`[Applicant’s Mark] developed by me and the [Opposer’s SS Link Mark] developed by your
`
`company.” It is clear from App1icant’s letter that:
`
`a.
`
`Applicant knew of Opposer’s SS Link Mark prior to Applicant contacting
`
`Opposer;
`
`b.
`
`Applicant knew that Opposer’s SS Link Mark and App1icant’s Mark were, at
`
`least, confusingly similar. (Otherwise, why would Applicant contact Opposer?)
`
`c.
`
`Applicant is an unknown person (“anonymity like me”), but he demanded that
`
`Opposer give him a job: “If I and your company together make a merger
`
`company, I am confident to grow it without fail but into fashion company
`
`competent to raise sale record over one billion dollars per year with three or five
`
`years.” If not, Applicant was “prepared to leave the company without lingering at
`
`any job position or title in that company.” In other words, Applicant wanted a job
`
`and a salary from Opposer because Applicant had filed for a trademark
`
`(Applicant’s Mark) that is a close copy of Opposer’s SS Link Mark.
`
`O488l38.DOC
`
`4
`
`
`
`
`
`11.
`
`On August 6, 2002, Applicant sent a further letter to Opposer. In such letter,
`
`Applicant proposes the creation of a company that includes Opposer’s trademarks. In exchange
`
`for Applicant’s contribution of his applications and registrations for Applicant’s Mark, Applicant
`
`proposes to take a twenty-five percent (25%) share in the company. This is extortion. Opposer
`
`is a long existing, internationally famous, and successful company that has sold about US$500
`
`million worth of products over the last twenty (20) years under the STUSSY mark and/or SS
`
`Link Mark. Applicant has no company and no business. Applicant has merely filed for
`
`variations on Opposer’s famous SS Link Mark and now Applicant wants twenty-five percent
`
`(25%) of Opposer.
`
`12.
`
`Applicant has no good faith intention to make trademark use of Applicant’s Mark
`
`on each or any of the goods listed in the notice of publication for Applicant’s Mark.
`
`WHEREFORE, registration by Applicant of the aforesaid Applicant’s Mark for the
`
`aforesaid goods will be damaging to Opposer, and Opposer therefore requests that the
`
`Opposition be sustained.
`
`Opposer submits herewith the requisite $300.00 filing fee. Please charge any additional
`
`fees or credit overpayment to Deposit Account No. 13-3735 .
`
`Please address all correspondence to John R. Sommer, Esq., Attomey-at-Law, 17426
`
`Daimler Street, Suite 200, Irvine, California 92614 and Matt J. Railo Esq. and Brian A. Ross,
`
`Esq., Mitchell Silberberg & Knupp LLP, 11377 West Olympic Boulevard, Los Angeles,
`
`California 90064-1683.
`
`0488l38.DOC
`
`5
`
`
`
`
`
`This Request is being submitted in triplicate as required by 37 C.F.R. § 2.102(d).
`
`1 5
`
`Respectfully submitted,
`
`,0
`,
`/’
`:32 w Cc/%-—-"
`'30
`R. Sommer
`
`Attomey-at-Law
`l7426 Daimler Street
`
`Irvine, CA 92614
`949-752-5344
`
`Matt J. Railo
`Brian A. Ross
`
`Mitchell Silberberg & Knupp LLP
`11377 West Olympic Boulevard
`Los Angeles, CA 90064-1683
`310-312-3206
`
`Attorneys for Opposer
`
`Date of Deposit: December _l_'i_, 2002
`
`I hereby certify that this paper or fee is being deposited
`with the United States Postal Service on the date
`indicated above and is addressed to: Assistant
`
`Commissioner for Trademarks, 2900 Crystal Drive,
`Arlington, Virginia 22202-3513.
`
`z-l£Mi._
`
`(Signature)
`
`0488l38.DOC
`
`6
`
`
`
`
`
`Int. CI.: 24
`
`Prior U.S. CIs.: 42 and 50
`
`Reg. No. 2,590,655
`United States Patent and Trademark Office
`Registered July 9, 2002
`
`TRADEMARK
`PRINCIPAL REGISTER
`
`STUSSY, INC. (CALIFORNIA CORPORATION)
`17426 DAIMLER ST
`
`IRVINE, CA 92614
`
`FOR: CLOTH LABELS, IN CLASS 24 (us. CLS. 42
`AND 50).
`
`FIRST USE 8-O-I997; IN COMMERCE 8-0-I997.
`
`OWNER OF US. REG. NOS. 2,225,736, 2,343,524.
`AND 2,399,916.
`
`IN PART, OF A STY-
`THE MARK CONSISTS,
`LIZED DRAWING OF THE LETTERS "S" AND "S"
`IN A CIRCLE.
`
`SER. NO. 76-I03,0I4, FILED 8-4-2000.
`
`MICHELLE DUBOIS, EXAMINING ATTORNEY
`
`
`
`UNITED STATES DEPARTMENT OF COMMERCE
`
`United States Patent and Trademark Office
`
`September 13, 1999
`
`THE ATTACHED U.S. TRADEMARK REGISTRATION 2,225,736 IS
`
`CERTIFIED TO BE A TRUE COPY OF THE REGISTRATION ISSUED BY
`
`THE UNITED STATES PATENT AND TRADEMARK OFFICE WHICH
`
`REGISTRATION IS IN FULL FORCE AND EFFECT.
`
`REGISTERED FOR A TERM OF 10 YEARS FROM February 23, 1999
`
`SAID RECORDS SHOW TITLE TO BE IN: Registrant
`
`
`
`....'.............._....:..g..‘_,.
`
`I 3
`
`*=I
`
`II,
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`
`§.
`
`By Authority of the
`
`COMMISSIONER OF PATENTS AND TRADEMARKS
`
`'”/ZZé¢</
`
`N. WOODSON
`
`Certifying Officer
`
`
`
`
`
`-'npnunixnnu9:3?-7;?;;;Ié'i:T;S§:ii7n33ia:_.-_n.A.'‘~
`
`
`
`
`
`Int. Cl.: 25
`
`Prior U.S. Cls.: 22 and 39
`
`United States Patent and Trademark Office
`
`Reg. No. 2,225,736
`
`Registered Feb. 23, 1999
`
`TRADEMARK
`PRINCIPAL REGISTER
`
`INC. (CALIFORNIA CORPORATION)
`‘ STUSSY.
`17426 DAIMLER ST.
`IRVINE. CA 92614
`
`TOPS, CAPS AND HATS,
`CLS. 22 AND 39).
`FIRST USE
`I-0-1992.
`
`I-0-1992;
`
`IN CLASS 25 (U.S.
`
`IN
`
`COMMERCE
`
`COATS.
`NAMELY.
`CLOTHING.
`FOR:
`PANTS,
`JERSEYS,
`JACKETS.
`DRESSES,
`SHIRTS. SHORTS, SKIRTS. SWEATSHIRTS,
`SWEATPANTS. SWIMSUITS. T-SHIRTS, TANK
`
`SER. NO. 75—4l4,'.l6S, FILED I-6-1998.
`
`M. E. BODSON, EXAMINING ATTORNEY
`
`
`
`
`
`Int. CI.: 26
`
`Prior U.S. CIs.: 37, 39, 40, 42 and 50
`
`United States Patent and Trademark Office
`
`Reg. No. 2,450,864
`Registered May 15, 2001
`
`TRADEMARK
`
`PRINCIPAL REGISTER
`
`
`
`STUSSY, INC. (CALIFORNIA CORPORATION)
`I7426 DAIMLER ST.
`IRVINE. CA 92614
`
`FIRST USE 0-o-1939; IN COMMERCE 0-0-1989.
`
`OWNER OF U.S. REC. NO. 2.225.736.
`
`FOR: BELT BUCKLES NOT MADE OF PRECIOUS
`METAL FOR CLOTHING, BUTTONS FOR CLOTI-I—
`ING, EMBROIDERED EMBLEMS, FABRIC APPLI-
`QUES, ORNAMENTAL NOVELTY BUTTONS,
`NOVELTY PINS, ORNAMENTAL RIBBONS MADE
`OF TEXTILE, METAL CLOTHES BUTTONS, PLAS-
`TIC CLOTHES BUTTONS, IN CLASS 26 (US. CLS. 37,
`39, 40, 42 AND 50).
`
`IN PART. OF A STY~
`THE MARK CONSISTS,
`LIZED DRAWING OF THE LETTERS "S" AND "S"
`IN A CIRCLE.
`
`SER. NO. 75-932.965, FILED 3-2-2000.
`
`JANICE L. MCMORROW, EXAMINING ATTOR-
`NEY
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