T779/5
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`C‘llllllllllllllllllllllllllllllllllllllllllll L
`01 -28-2003
`u.s. Pam: A TMO1'clTM Mail Rcpt. D1. #340 1
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`I;_RA_13_13J\’IA__.;RK_S,..
`Atty. Docket No. 32§}95—o3; =
`7:1
`1
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE TI'I(-IE
`TRADEMARK TRIAL AND APPEAL BOARD
`U7
`
`Hugo Boss AG,
`Opposer,
`
`V.
`
`Golden Kitty Group Inc.,
`Applicant.
`
`)
`)
`)
`)
`)
`
`)
`)
`
`BOX TTAB
`Commissioner for Trademarks
`U-3 Patent and Trademark Office
`2900 Crystal Drive
`Arlington, Virginia 22201-3513
`
`Opposition No.:
`.
`Serial§No.: 76/271,543
`1
`Mark; BIG BOSS
`
`cf.
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`01/30/2003 zclxkimu 00000002 75271543
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`300_oo up
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`
`Hugo Boss AG, a joint stock company organized tinder the laws of the Federal Republic
`
`of Germany, having a place of business at Dieselstrasse 12 D-72555, Metzingen, Federal
`Republic of Germany, believes it will be damaged and injured by the registration of the mark
`
`BIG BOSS for “belts” in International Class 25, as shown Allin Application Serial No. 76/271,543,
`filed on June 15, 2001 by Golden Kitty Group Inc. (hereinafter “Applicant”), and published on
`
`April 9, 2002 at page TM 320 of the Official Gazettefor Tffademarks.
`
`Opposer alleges, solely for the purpose of this proceeding, as grounds for opposition, the
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`following:
`
`1.
`
`Applicant filed Application Serial No. 76/271,543 for BIG BOSS for “belts” in
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`International Class 25, on June 15, 2001, based on use of the mark under Section 1(a) of the
`
`WASHINGTON 358964vl
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`

`
`
`
`'3‘
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`Lanham Act, as evidenced by publication of said mark ‘on April 9, 2002 at page TM 320 of the
`
`Official Gazettefor Trademarks.
`
`2.
`
`Opposer
`
`is
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`the owner of the following United States
`
`registrations and
`
`applications, among others:
`
`Mark
`
`Goods/Services
`
`
`
`Registration/
`Application No.
`
`
`
`‘ BALDESSARINI
`
`HUGO BOSS
`(Stylized)
`
`
`
`76/416,301
`
`1,023,305
`
`BOSS
`
`,
`
`1,429,737
`1,472,180
`1,512,402
`
`1,594,226
`
`L
`
`1,933,326
`
`2,303,080
`
`BOSS
`
`BOSS
`BOSS
`
`BOSS
`
`BOSS
`BOSS
`
`2,429,013
`
`’
`
`BOSS
`
`2,436,050
`
`2,517,600
`
`74/323,654
`
`2,543,152
`
`76/300,389
`
`WASHINGTON 3 58964vl
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`BOSS
`
`BOSS
`
`BOSS
`
`BOSS
`
`BOSS
`
`
`
`Games, toys; gymnastics and sports apparatus, in
`particular for skiing, golf clubs and tennis rackets;
`balls; gymnastics and sports articles in
`International Class 28
`Work clothing for men and women, such work
`clothing comprising shirts, pants, jeans, women’s
`uniforms, hats, blazers, jackets, aprons, blouses,
`vests, coats, t-shirts, dresses in International Class
`25
`‘
`<935CU2
`OOD-m E .53335BE. Q333U)0: DJ
`
`00
`Jewelry in International Class 14
`Glasses esp'ecial1y sunglasses and parts thereof in
`International Class 9
`Leather goods and goods made of imitation
`leather, namely, totebags, garment bags for travel,
`billfolds, briief cases, wallets, luggage and
`handbags;
`umbrellas in International Class 18
`CD.9.H» 9..59; 5 )—'lE»393»5:3E Q9:V} U) N oo
`_
`Pants, jeansl, shorts, T-shirts, vests, jackets,
`sweaters, bifcycle shorts, swim trunks, tank tops,
`belts, hats, golf caps, visors, blouses, dresses and
`skirts in International Class 25
`Shirts, sport? shirts, sweat pants; sweat shirts and
`golf shirts in International Class 25
`Retail clothing and accessory store services in
`International Class 35
`Coffee mugs in Class 21; towels in Class 24;. and
`socks in International Class 25
`Various goods in International Classes 14, 16, 18,
`22, 25 and 28
`Various goocéls in International Class 24
`Tobacco products and lighters in International
`Class 34
`
`

`
`
`
`76/343,767
`
`BOSS
`
`76/367,198
`
`I
`
`BOSS
`
`26
`
`Clothing,.namely, beachwear, blouses, bottoms,
`dresses, footwear, golf wear, headwear, hosiery,
`jackets, lingerie, loungewear, neckwear, pants,
`rainwear, shirts, shorts, skirts, skiwear, sleepwear,
`socks, suits, sweaters, sweatshirts, tennis wear,
`tops, tuxedos and underwear in International
`Class 25 ,
`Various goods in International Classes 23, 24 and
`
`90ca.(/1 I-4:1 E39-’.5B Qm3 N UI
`or:
`_
`BOSS AMERICA
`High fashiloned men's wear-namely, suits, shirts,
`BOSS CREATION
`coats, trousers, and jackets in International Class
`HUGO BOSS PARIS
`25
`‘
`L
`& Design
`Various goods in International Class 25
`‘
`BOSS GOLF
`BOSS HUGO BOSS Watches and jewelry in International Class 14;
`belts in Intjernational Class 25
`Fashion clothing for men, namely, suits, trousers,
`jackets, coats, shirts, pullovers, hosiery, jogging
`suits, knit shirts, sweat shirts, ties, hats and caps
`in International Class 25
`Various goods in International Class 3
`
`74/346,232
`1,373,892
`
`2,654,602
`1,531,899
`
`1,614,935
`
`‘
`
`2,399,198
`
`2,508,270
`
`2,590,289
`
`75/241,914
`
`75/385,178
`
`2,564,832
`
`76/269,660
`
`BOSS HUGO BOSS
`
`BOSS HUGO BOSS
`(Stylized)
`BOSS HUGO BOSS
`
`BOSS HUGO BOSS
`,
`(Stylized)
`
`BOSS HUGO BOSS
`BOSS HUGO BOSS
`, BOSS HUGO BOSS
`,
`(Stylized)
`BOSS HUGO BOSS
`(Stylized)
`
`
`
`76/300,390
`
`BOSS HUGO BOSS
`(Stylized)
`
`76/435,640
`
`(Stylized)
`BOSS HUGO BOSS
`,
`(Stylized)
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`WASHINGTON 358964vl
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`
`
`5S!o::U}
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`Retail clotlling and accessory store services in
`International Class 35
`Various goods in International Class 25
`1
`§'3osU)
`oo:2.U) 5 F(-93E15B‘J. 9.rs:$ N U1
`00
`'
`_
`Various goods in International Class 16
`Shoes in International Class 25
`;
`Clothing, namely, beachwear, blouses, bottoms,
`dresses, fooitwear, golf wear, headwear, hosiery,
`jackets, lingerie, loungewear, neckwear, pants,
`rainwear, shirts, shorts, skirts, skiwear, sleepwear,
`socks, suits, sweaters, sweatshirts, tennis wear,
`tops, tuxedo'_s and underwear in International
`Class 25
`1‘
`Various goods in International Class 34
`
`Class 9 and games in International Class 28
`
`Audio CDs and electronic games in International
`Various goods in International Classes 3 and 25
`'
`Various goods in International Classes 14, 25 and
`35
`V
`
`
`
`

`
`
`
`Various goods in International Classes 3, 9, 18
`and 25
`;
`
`
`
`Various goods in International Class 25
`Sports equipment - in particular, balls, skis, golf
`clubs, tennis rackets in International Class. 28
`Glasses esjpecially sunglasses and parts thereof in
`Internatiohal Class 9
`Leather goods, namely, attache cases, totebags,
`garment bags for travel, billfolds, brief cases, key
`cases, wallets; luggage and handbags made of
`leather and/or textile material and/or plastics
`and/or metal; umbrellas in International Class 18
`
`Retail store services featuring clothing,
`accessories, beauty, fragrance and personal care
`products and sports articles in International Class
`35
`:
`
`
`
`Shoes in Ifiiternational Class 25
`Calendars,§ note pads, note paper, writing paper
`and pencils in International Class 16
`Articles oficlothing; socks and stockings; head
`coverings; jbelts; scarves and shawls; accessories,
`namely head scarves, neck scarves, shoulder
`scarves, poicket kerchiefs; ties; gloves; shoes in
`International Class 25
`Various goods in International Class 25
`Various goods in International Class 25
`
`76/453,252
`-
`
`1,624,938
`
`’ 1,499,728
`
`BOSS WOMAN
`
`HUGO BOSS
`HUGO BOSS
`
`1,515,181
`
`HUGO BOSS
`
`1,594,225
`
`HUGO BOSS
`
`2,256,567
`
`HUGO BOSS
`
`HUGO BOSS
`HUGO BOSS
`
`
`HUGO HUGO BOSS
`WOMAN and Design
`
`
`
`
`
`2,242,539
`
`2,419,483
`
`76/453,253
`
`1,214,960
`
`74/346,230
`
`LADY BOSS
`LADY BOSS
`
`3.
`
`Opposer is also the owner of common law; rights in the marks listed above. The
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`marks listed above and the corresponding common law marks are referred to here=inafter
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`collectively as the “BOSS Family of Marks.” Opposer}, and/or its predecessor(s)-in-interest,
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`has/have used marks in the BOSS Family of Marks in interstate commerce for more than 113
`years. Opposer owns numerous registrations for the B(i)SS Family of Marks throughout the
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`world.
`
`A 4.
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`Opposer is in the business of offering a; wide range of goods and services
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`including without limitation clothing, jewelry, accessories and retail store services under the
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`BOSS Family of Marks.
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`WASHINGTON 358964vl
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`

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`5.
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`The mark proposed for registration by lApplicant is used in a typeface nearly
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`identical to that of many of Opposer’s BOSS Family of Marks.
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`6.
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`Opposer has prominently and extensively used, promoted and advertised its
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`BOSS Family of Marks for many years throughout the Ulnited States and the world. By virtue of
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`Opposer’s efforts, the expenditure of considerable sums :for promotional activities, and b-y virtue
`of the excellence ofK Opposer’s goods and services,
`i,Opposer has gained a most valuable
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`reputation in its BOSS’ Family of Marks.
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`7.
`
`Opposer’s BOSS Family of Marks are fainous, and became famous prior to the
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`filing date of Applicant’s application and prior to Applicant’s use of Applicant’s mark captioned
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`above. Opposer’s BOSS Family of Marks is therefore entitled to a high degree and wide zone of
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`protection.
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`If Applicant’s alleged trademark captioned above is allowed to register, such
`l
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`registration will dilute the distinctive quality of Opposer’s famous BOSS Family of Marks.
`
`8.
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`Applicant's alleged mark “so resembles la mark registered in the Patent and
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`Trademark Office, or armark .
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`.
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`. previously used in the Illnited States and not abandoned, as to
`
`is
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`Li
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`be likely, when appliedlto the goods of the applicant, to cause confusion, or to cause mistake, or
`'2
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`to deceive.” 15 U.S.C.
`
`l052(d).
`
`If Applicant is permitted to use and registlier his alleged mark captioned above,
`9.
`confusion in trade resulting in damage and injury to Oppoiser would be caused and would result
`by reason of the identical nature of Applicant's alleged rinark captioned above and the lBOSS
`
`Family of Marks of Opposer. Furthermore, any defect, lmisrepresentation, objection or fault
`
`found with Applicant's goods promoted under his alleged mark captioned above would
`i
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`WASHINGTON 358964vl
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`

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`necessarily reflect on and seriously injure the reputation that Opposer has established through
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`use of its BOSS Family of Marks.
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`10.
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`If Applicant is granted the registration herein opposed, he would thereby obtain at
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`least a prima facie exclusive right to the use of his alleged mark. Such registration would be a
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`source of further damage and injury to Opposer.
`
`11.
`For thereasons set forth in the foregoing jparagraphs, Applicant is not entitled to
`register his alleged mark and the application should be denied in accordance with Section 2(d) of
`
`the Lanham Act, 15 U.S.C. § 1052(d).
`
`H WHEREFORE, Opposer prays that Application Serial No. 76/271,543 be rejected, and
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`that registration of Applicant’s alleged mark shown and specified therein be refused and denied,
`
`and that this Opposition be sustained in favor of Opposer.:
`
`Opposer hereby gives notice under Rule 2.l22(d) of the Trademark Rules of Practice that
`at hearing and in any appeal on this opposition proceeding, it will rely on Opposer's United
`
`States registrations andiapplications as referenced above as evidence in support of this Notice of
`
`Opposition.
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`WASHINGTON 358964Vl
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`

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`
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`A duplicate copy of this Notice of Opposition land a check for $300 for the requisite
`
`government filing fee are enclosed herewith. Please deduct any additional fees due from Deposit
`
`Account 03-3370.
`
`Respectfully submitted,
`
`
`
`
` Pélmela T. Church
`Cathy J. Futrowsky, Reg. No. 37,172
`Lisa W. Rosaya
`COUDERT BROTHERS LLP
`
`1627 I Street, N.W.
`V‘/iashington, D.C. 20006-4007
`Tel: (202) 775-5100
`Fax: (202) 775-1168
`
`Date: January 28, 2003:
`
`Attorneys for Opposer
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`WASHINGTON 358964vl