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`TRADEMARKS
`Atty. Docket No. 32895-29
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE
`TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition No.:
`
`Serial No.: 76/355,349
`
`Mark: BOSS IN ALABAMA
`
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`Hugo Boss AG,
`Opposer,
`
`v.
`
`Gary E. Hoovestal,
`Applicant.
`
`BOX TTAB
`Commissioner for Trademarks
`U.S. Patent and Trademark Office
`
`2900 Crystal Drive
`Arlington, Virginia 22201-3513
`09/17/2003 KBIBBOIIS 00000001 76355349
`
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`NOTICE OF OPPOSITION
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`Hugo Boss AG, a joint stock company organized under the laws of the Federal Republic
`
`of Germany, having a place of business at Dieselstrasse 12 D-72555, Metzingen, Federal
`
`Republic of Germany (“Opposer” or “Hugo Boss”), believes it will be damaged and injured by
`
`the registration of the mark BOSS IN ALABAMA for “entertainment services, namely,
`
`conducting awards programs to recognize achievement
`
`in the field of sporting events” in
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`International Class 41, as shown in Application Serial No. 76/355,349, filed on January 3, 2002
`
`by Gary E. Hoovestal (hereinafter “Applicant”), and published on January 21, 2003 at page TM
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`557 of the Official Gazettefor Trademarks.
`
`Opposer alleges, solely for the purpose of this proceeding, as grounds for opposition, the
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`following:
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`WASHINGTON 36961 9vl
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`1. Opposer is the owner of the following U.S. registrations and applications for the word
`
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`ggj-mark BOSS: United States Registration Nos. 1,023,305, 1,429,737, 1,472,180, 1,512,402,
`1‘;
`
`1,594,226, 1,933,326, 2,303,080, 2,429,018, 2,436,050, 2,517,600 and 2,543,152;
`
`and
`
`Application Serial Nos. 74/323,654, 76/300,389 and 76/343,767.
`
`2. Opposer is also the owner of U.S. registrations and applications for BOSS HUGO
`
`BOSS, HUGO BOSS and many other marks containing BOSS. A complete list of all of
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`Opposer’s U.S. registrations and applications is set forth below:
`
`Marks
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`BOSS
`BOSS
`
`BOSS
`
`BOSS
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`BOSS
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`BOSS
`BOSS
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`BOSS
`
`BOSS
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`BOSS
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`BOSS
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`BOSS GOLF
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`HUGO BOSS
`
`HUGO BOSS
`
`HUGO BOSS
`
`HUGO BOSS
`
`HUGO BOSS
`
`HUGO BOSS
`
`HUGO BOSS
`BOSS HUGO BOSS
`
`BOSS HUGO BOSS
`
`BOSS HUGO BOSS
`
`BOSS HUGO BOSS (Stylized)
`BOSS HUGO BOSS (Stylized)
`BOSS HUGO BOSS (Stylized)
`BOSS HUGO BOSS (Stylized)
`BOSS HUGO BOSS (Stylized)
`HUGO BOSS GOLF
`
`HUGO HUGO BOSS (Stylized)
`HUGO HUGO BOSS (Stylized)
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`WASHINGTON 36961 9V1
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`Registration Nos.
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`1,023,305
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`1,429,737
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`1,472,180
`1,512,402
`
`1,594,226
`
`1,933,326
`
`2,303,080
`
`2,429,018
`
`2,436,050
`
`2,517,600
`
`2,543,152
`
`2,654,602
`
`1,499,728
`
`1,515,181
`
`1,594,225
`
`1,624,938
`
`2,242,539
`
`2,256,567
`
`2,419,483
`
`1,531,899
`
`1,614,935
`2,508,270
`
`2,399,198
`
`2,590,289
`
`2,564,832
`2,698,987
`
`2,712,748
`
`2,560,780
`
`1,852,434
`1,853,427
`
`

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`I
`
`HUGO HUGO BOSS (Stylized)
`HUGO HUGO BOSS (Stylized)
`HUGO HUGO BOSS (Stylized)
`HUGO HUGO BOSS (Stylized)
`HUGO HUGO BOSS (Stylized)
`HUGO HUGO BOSS (Stylized)
`HUGO HUGO BOSS (Stylized)
`HUGO HUGO BOSS (Stylized)
`LADY BOSS
`
`BOSS CREATION HUGO BOSS PARIS &
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`Design
`BALDESSARINI HUGO BOSS (Stylized)
`BALDESSARINI HUGO BOSS (Stylized)
`
`Marks
`
`BOSS
`
`BOSS
`
`BOSS
`
`BOSS
`
`BOSS HUGO BOSS
`
`BOSS HUGO BOSS
`
`BOSS HUGO BOSS
`BOSS HUGO BOSS (Stylized)
`BOSS HUGO BOSS (Stylized)
`BOSS HUGO BOSS (Stylized)
`BOSS AMERICA
`
`BOSS WOMAN
`
`HUGO HUGO BOSS
`
`HUGO HUGO BOSS WOMAN
`
`LADY BOSS
`
`BALDESSARINI HUGO BOSS (Stylized)
`BALDESSARINI HUGO BOSS (Stylized)
`
`1,853,630
`1,860,740
`1,864,791
`1,865,732
`1,873,861
`1,891,134
`2,031,802
`2,447,282
`1,214,960
`
`1,373,892
`
`1,928,978
`2,450,392
`
`Application Nos.
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`74/323,654
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`76/300,389
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`76/343,767
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`76/367,198
`
`75/385,178
`
`76/300,390
`
`76/300,391
`76/343,768
`76/435,640
`76/501,849
`74/346,232
`
`76/435,252
`
`76/344,981
`
`76/453,253
`
`74/346,230
`
`76/343,769
`76/416,301
`
`3. The family of BOSS marks consisting of the registrations and applications listed
`
`above in paragraphs 1 and 2 as well as additional marks used by Opposer to which it has
`
`common law rights are referred to hereinafter collectively as the “BOSS Marks.”
`
`4. Opposer also owns numerous registrations for the BOSS Marks throughout the world.
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`WASHINGTON 3696l9v1
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`5. Opposer’s numerous U.S.
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`trademark registrations and applications for the BOSS
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`1
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`Marks cover clothing and vast range of other products and services including, but not limited to:
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`retail store services, model vehicles, video games, jewelry, watches, CD5, tobacco products,
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`stationery and desk items, leather goods, clocks, sports equipment, golf clubs, eyeglasses, towels
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`and linens, mugs, shoes, personal care products, accessories, skin care products, sunglasses and
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`luggage, among other premium quality consumer oriented products. Of note, Opposer produces
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`a line ofj eans called ALABAMA JEANS. See attached exhibit.
`
`6. Opposer is one of the foremost designers, manufacturers and retailers of high-end
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`fashions and related products in the United States and throughout the world. For over 30 years,
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`since at least as early as 1970, Opposer, itself, has designed, manufactured, sold, distributed and
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`marketed high-end fashion wear and related products in the United States under the BOSS
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`Marks. Opposer and its predecessor(s)-in-interest have used some or all of the BOSS Marks in
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`interstate commerce in the United States for more than 114 years.
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`7. The BOSS Marks are used prominently in advertising and on promotional materials,
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`on promotional items, at promotional events, such as award programs, sporting and media
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`events, on displays at retail stores, and on business stationery and business cards.
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`8.
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`It is very common for fashion houses to license their trademarks for use on or in
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`connection with a broad range of goods and services,
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`in addition to clothing and fashion
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`accessories.
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`It
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`is also common for fashion houses to expand use of their trademarks in
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`connection with media events such as awards programs, sporting programs, charity events and
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`the like.
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`WASHINGTON 36961 9vl
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`9. Thus, the fashion industry is closely tied to events such as those of Applicant, and
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`Therefore, consumers who come across Applicant’s use of its alleged mark in connection with its
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`awards programs will undoubtedly make an association between Applicant’s services and
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`Opposer, and are likely to believe that Opposer is associated with or a sponsor of such events, all
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`of which will cause damage and injury to Opposer.
`
`10.
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`Since 1972, Hugo Boss has devoted a substantial part of its advertising and
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`promotional efforts to the sponsorship of sporting events, tournaments and teams in the United
`
`States and Europe, including many in motor sports events, among them: the British Fomiula One
`
`Team McLaren (motor sports), Penske Racing Team, U.S. CART Series (motor sports),
`
`Kitzbuehl Alpine Rally (motor sports), Stewart Racing, Fonnula One (motor sports), German
`
`Touring Car Masters Championship with AMG (motor sports), Linde Gennan Masters (golf),
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`Cannes Open (golf), French Open (golf), European Masters (golf), Gennan Masters (golf),
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`Mercedes German Masters (golf), German Open (golf), Volvo PGA Championship (England)
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`(golf), Volvo Scandinavian Masters (Sweden) (golf), Volvo Masters (Spain) (golf), Volvo China
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`Tour (golf), Asian Classic/Johrmie Walker Classic (golf), Desert Classic (Dubai) (golf), Volvo
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`Masters (Malaysia) (golf), Volvo Masters of Thailand (golf), Volvo Asian Matchplay (golf),
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`Hugo Boss Foursomes (golf), Ryder Cup (golf), Davis Cup (tennis), World Championship, New
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`York Masters (tennis), Ebel European Masters (tennis), Ebel U.S. Pro Indoors (tennis), Ebel
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`Classic Lausanne (tennis), Lipton Key Biscayne (tennis), Indian Wells (tennis), French Open
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`(tennis), Porsche Grand Prix (tennis), German Open, Mercedes Cup (tennis), Compaq Grand
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`Slam Cup (Munich) (tennis), Monte Carlo Open (tennis), and Kremlin Cup (tennis), and the
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`Hahnenkamm Race (Austria) (skiing). At these events, the BOSS Marks have been prominently
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`WASHINGTON 3696l9vl
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`displayed on billboards, on signs, on sports equipment and on clothing worn by the athletes and
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`11.
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`Since 1977, Hugo Boss has devoted considerable advertising funds to sponsor top
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`individual competitors in various sporting competitions, including Ayrton Senna (motor sports),
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`Niki Lauda (motor sports), Alain Prost (motor sports), Millie Miglia (motor sports), Mika
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`Hakkinen (motor sports), Phil Michelson (golf), Serveriano Ballesteros (golf), Isiah Thomas
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`(basketball), Stephon Marbury (basketball), Mark Davis (golf), Steve Webster (golf), Gary
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`Evans (golf), Matt Kuchar (golf), David Gossett (golf), Garrett Willis (golf), Sven Struver (golf),
`
`Zhang Lian Wie (golf), Rudi Sailer (golf), Thorsten Gideon (golf), Darren Clarke (golf), Thomas
`
`Gogele (golf), Stephen Allan (golf), Morton Backhausen (golf), Retief Goosen (golf), Adam
`
`Scott (golf), Bjorn Dunderbeck (windsurfing), Pirmin Zurbriggen (skiing), and windsurfing
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`teams, including the German Olympic Surf Team. These athletes have endorsed Hugo Boss in
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`return by promoting the BOSS Marks at their respective sporting events.
`
`12.
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`Hugo Boss has also devoted considerable advertising funds for endorsements of
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`Hugo Boss clothing by top athletes, such as Bjorn Borg (five time Wimbledon tennis champion)
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`and Jurgen Hingsen (world-record holder and Olympic Silver Medalist in the decathlon), as well
`
`as Vitali Klitschko (holder of the European and Intercontinental boxing titles, as well as a WBO
`
`World Champion) and Wladimir Klitschko (European and WBA Intercontinental Champion for
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`boxing and gold medal boxing winner at the Olympic games in Atlanta in 1996). These athletes
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`wear and promote Hugo Boss products.
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`13.
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`Hugo Boss is also a sponsor of the arts and thus the BOSS Marks have been
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`prominently displayed at events including the Hugo Boss Prize Exhibition and the Frank 0.
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`WASHINGTON 36961 9vl
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`the Stedelijk Museum in Amsterdam.
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`In addition, in 1996, the prestigious Hugo Boss Prize was
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`established in conjunction with the Guggenheim Museum.
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`14.
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`Since at least as early as 1996, Hugo Boss has been heavily involved in and
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`expended hundreds of thousands of dollars in advertising and promotional efforts associated with
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`widely publicized U.S. award events such as the Oscars, the Emmys and the Academy Awards.
`
`As is custom, when asked who is wearing which designers at such awards shows, Hugo Boss is
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`often the choice among stars. For example, Nicholas Cage, John Travolta, Jim Carrey, Brad Pitt,
`
`James Gandolfini, Michael Chiklis, Haley Joel Osment, Richard Famsworth, Wes Bentley, LL
`
`Cool J and Chris Klein all have worn Hugo Boss clothing to these events.
`
`15.
`
`In 1985, clothing bearing the BOSS Marks appeared in the popular movie “Rocky
`
`IV.” The home video cassette of “Rocky IV,” which is readily available in video rental stores
`
`and homes across the United States, shows Sylvester Stallone, wearing a sweatshirt bearing on of
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`the BOSS Marks.
`
`16.
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`Hugo Boss products have appeared in several additional movies and television
`
`series. For example, actors in the movies “Ali”, starring Will Smith, “Charlie’s Angels”, and
`
`“Driven”, starring Sylvester Stallone, and in the television series “Miami Vice” and “L.A. Law”
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`are regularly shown wearing Hugo Boss products. Hugo Boss was even identified in the series
`
`credits. Thus, the BOSS Marks have been seen and are widely recognized by millions of people
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`in the United States and around the world.
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`WASHINGTON 36961 9vl
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`17.
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`Since 1983, Hugo Boss has regularly advertised its products in prominent and
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`widely distributed United States magazines and newspapers such as The New York Times
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`Magazine, the Los Angeles Times, Esquire, G. Q., Interview, Vanity Fair, Women ’s Wear Daily,
`
`WMagazine, Harper ’s, Vogue, DNR, In Style, Men ’s Health and Elle.
`
`18.
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`Hugo Boss’s products are also advertised on the Internet, on the Hugo Boss
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`website at <<www.hugoboss.com>>, on television, in movies, and on billboard advertisements.
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`19.
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`Opposer’s fashion and related products are extremely popular worldwide and
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`Hugo Boss has sold many millions of dollars of product bearing the BOSS Marks.
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`20.
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`Over
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`the years, and as a result of Opposer’s substantial advertising and
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`promotional efforts, prominent and continuous use of the BOSS Marks, and the extensive critical
`
`review and acclaim Hugo Boss has received for its products, Hugo Boss has become widely
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`recognized to the purchasing public as the source of products bearing the BOSS Marks. The
`
`BOSS Marks are widely recognized by Hugo Boss’ customers and the purchasing public as
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`being associated with Hugo Boss high quality goods and have become synonymous with the
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`goodwill and reputation of Hugo Boss.
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`21.
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`By virtue of this extensive use and advertising, the BOSS Marks have become
`
`and are famous.
`
`22.
`
`Applicant
`
`filed Application Serial No. 76/355,349 for
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`the mark BOSS IN
`
`ALABAMA for “entertainment services, namely, conducting awards programs to recognize
`
`achievement in the field of sporting events” in International Class 41, on January 3, 2002, based
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`WASHINGTON 36961 9vl
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`n an intent to use the mark in U.S. commerce. This application was published for opposition,
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`but according to the PTO records, no amendment to allege use has been filed.
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`23.
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`Applicant’s mark is confusingly similar to Opposer’s mark, which has been in use
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`in connection with its products since at least as early as 1889.
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`24.
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`Applicant’s use of its alleged mark is calculated to trade off Opposer’s goodwill
`
`in its BOSS Marks.
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`25.
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`Upon information and belief, Opposer’s goods and services and Applicant’s
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`services are likely to be offered, sold and used by the same class of purchasers.
`
`26.
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`Upon information and belief, Opposer’s goods and services and Applicant’s
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`services are likely to be offered and/or promoted or sold in the same channels of commerce.
`
`27.
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`Opposer believes and alleges that Applicant’s alleged mark, when applied to the
`
`services in Application Serial No. 76/355,349, is likely to cause confusion or mistake or to
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`deceive, and will deceive and mislead the trade and the purchasing public into believing that
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`Applicant’s services are sponsored, approved or endorsed by Opposer, or that Applicant is
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`authorized, licensed or controlled by Opposer, or that Applicant is a division or subsidiary of, or
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`in some way related to Opposer.
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`28.
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`Applicant’s alleged mark “so resembles a mark registered in the Patent and
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`Trademark Office, or a mark .
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`.
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`. previously used in the United States and not abandoned, as to
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`be likely, when applied to the goods of the applicant, to cause confilsion, or to cause mistake, or
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`to deceive.” l5 U.S.C. § lO52(d).
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`29.
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`If Applicant is permitted to register its alleged mark captioned above, confusion
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`in trade resulting in damage and injury to Opposer would be caused and would result by reason
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`if of the confusingly similar nature of Applicant’s alleged mark and Opposer’s BOSS Marks.
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`Furthermore, any misrepresentation, objection or fault found with Applicant’s services promoted
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`under its alleged mark would necessarily reflect on and seriously injure the reputation that
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`Opposer has established through its long and continuous use of its BOSS Marks.
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`30.
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`For the reasons set forth in the foregoing paragraphs, Applicant is not entitled to
`
`register its alleged mark and the application should be denied in accordance with Section 2(d) of
`
`the Lanham Act, 15 U.S.C. § l052(d).
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`3l.
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`Opposer’s famous BOSS Marks became famous well prior to January 3, 2002, the
`
`filing date of Applicant’s application. Opposer’s BOSS Marks are therefore entitled to a high
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`degree and wide zone of protection.
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`If Applicant’s alleged mark is allowed to register, such
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`registration will dilute the distinctive‘ quality of Opposer’s famous BOSS Marks.
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`32.
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`If Applicant is granted the registration herein opposed, it would thereby obtain at
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`least a prima facie exclusive right to the use of its alleged mark. Such registration would be a
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`source of further damage and injury to Opposer.
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`WHEREFORE, Opposer prays that Application Serial No. 76/355,349 be rejected, and
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`that registration of Applicant’s alleged mark shown and specified therein be refused and denied,
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`and that this Opposition be sustained in favor of Opposer.
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`Opposer hereby gives notice under Rule 2.l22(d) of the Trademark Rules of Practice that
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`at hearing and in any appeal on this opposition proceeding, it will rely on Opposer’s United
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`WASHINGTON 369619v1
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`E33: States registrations and applications as referenced above as evidence in support of this Notice of
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`Opposition.
`
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`A duplicate copy of this Notice of Opposition and a check for $300 for the requisite
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`government filing fee are enclosed herewith. Please deduct any additional fees due from Deposit
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`1
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`Account 03-3370.
`
`Respectfully submitted,
`
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`
`
`Pamela T. Church
`
`Cathy J. Futrowsky
`Lisa W. Rosaya
`COUDERT BROTHERS LLP
`
`1627 I Street, N.W.
`Washington, D.C. 20006-4007
`Tel: (202) 775-5100
`Fax: (202) 775-1168
`
`Date: September 3, 2003
`
`Attorneys for Opposer
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`WASHINGTON 369619v1
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`See larger image and
`other views
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`Colors:
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`WASHINGTON 362038vl
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`BOSS Hugo.Boss Alabama Basic Jean '
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`eLUXURY
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`Select Buying Options:
`Price:
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`$115.00
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`Addtoweddin Re is
`Don't have one?
`We'll set one up for you.
`
`See pricing chart
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`Men's Sizes:
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`‘ First Select Size
`See merchant's sizing charts
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`en Se ec Co °r 3 Men‘;
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`sizes:
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`See merchant's sizing charts
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`Availability: Usually ships in 2 to 3 business days. Shipping of
`some selections may vary. See product availability chart
`..........................................................4..
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`Product Description:
`The relaxed, timeless cool of denim, without sacrificing fit or
`quality. Not too tight or too loose, the perfect jean for everyday
`style. Made with BOSS attitude and appeal, finished with a logo
`on the coin pocket and a handsome black leather and metal
`patch on the back waistband.
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`0 Classic 5-pocket cut
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`100°/o cotton, with metal rivets on pockets
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`Zip front
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