Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA340890
`ESTTA Tracking number:
`04/05/2010
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91169226
`Plaintiff
`Arcadia Group Brands Ltd
`Floyd A. Mandell
`Katten Muchin Rosenman LLP
`525 W. Monroe Street
`Chicago, IL 60661
`UNITED STATES
`floyd.mandell@kattenlaw.com, william.dorsey@kattenlaw.com,
`cathay.smith@kattenlaw.com, deborah.wing@kattenlaw.com
`Motion to Amend Pleading/Amended Pleading
`Cathay Y. N. Smith
`floyd.mandell@kattenlaw.com, william.dorsey@kattenlaw.com,
`cathay.smith@kattenlaw.com
`/s/
`04/05/2010
`Arcadia's Second Amended Pleading.pdf ( 11 pages )(738986 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`
`Signature
`Date
`Attachments
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition No. 91-169,226
`
`Cancellation No. 92-049,146
`
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`Arcadia Group Brands Ltd.,
`
`Opposer,
`
`v.
`
`Studio Moderna SA,
`
`)
`Applicant.
`______.:_._:_M___)
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`Arcadia Group Brands Ltd.,
`
`Petitioner,
`
`v.
`
`Studio Moderna SA,
`
`)
`Registrant.
`____________:_______.___)
`
`(as consolidated)
`
`SECOND AMENDED CONSOLIDATED NOTICE OF OPPOSITION
`AND PETITION TO CANCEL
`
`Opposer-Petitioner, Arcadia Group Brands Limited (“Arcadia”), a company organized
`and existing under the laws of England, having a place of business at Colegrave House, 70
`Berners Street, London, WIT 3NL, United Kingdom, believes that it will be damaged by Studio
`Moderna SA’s (“Studio Modema”) registration of U.S. Application Serial No. 78/239,078 (the
`“Application”), published in the U.S. Patent and Trademark Office (“USPTO”) on August 13,
`2005, for the mark TOP SHOP TV & Design in Class 35, and that it is likely to be, or has been,
`damaged by Studio Moderna’s U.S. Registration No. 3,389,652 (the “Registration”), issued on
`February 26, 2008, for the mark TOP SHOP TV in connection with “on—line retail services in the
`field of general consumer merchandise.” Applicant—Registrant Studio Moderna has an address
`identified in the Registration and Application as Via Pretorio 22, Lugano, Switzerland 6900. For
`the reasons set forth below, Arcadia hereby opposes the Application and petitions to cancel the
`Registration, pursuant to 37 CFR §2.l0l(b) and 37 CFR §2.l‘l l(b).
`
`As grounds therefor, Arcadia alleges as followszl
`
`In View of the authority in certain circuits, requiring a party to replead dismissed claims
`in order tp preserve the issue for appeal (see, e. g., Parrino v. FHP, Inc, 146 F.3d 699
`
`

`
`Arcadia is the owner and operator of the internationally renowned TOPSHOP chain of
`1.
`retail stores and the www.topshop.com website, where it sells a wide range of clothing and
`accessories bearing Arcadia’s
`famous TOPSHOP and TOP SHOP names
`and marks
`(collectively, “TOPSHOP”). Arcadia, through its predecessors-in-interest, began using its mark
`in the United Kingdom no later than 1968, and began using the TOPSHOP names and marks in
`the United States no later than 1998, and continues to use such marks. Beginning in 2004,
`publications such as the Wall Street Journal, the New York Times, the LA Times, Women ’s Wear
`Daily, and Vogue started featuring the opening of Arcadia’s flagship TOPSHOP store in the
`United States. On or about April 2, 2009, Arcadia opened its first stand-alone Topshop store in
`the United States. Through Arcadia’s extensive sales, advertising and promotion activities,
`consumers worldwide, including in the United States, have long had familiarity with Arcadia’s
`TOPSHOP names and marks and associate the TOPSHOP brand exclusively with Arcadia.
`In
`fact,
`in each of the last four years,
`international sales of clothing and accessories bearing
`Arcadia’s TOPSHOP names and marks have totaled over seven hundred million dollars
`
`annually.
`
`Arcadia advertises and promotes its products and services extensively through many
`2.
`forms of media,
`including, but not
`limited to, advertisements in internationally circulated
`publications,
`in printed and electronic catalogs, and on the internet at www.topshop.com.
`Arcadia’s TOPSHOP brand has been featured in magazines and journals such as Lucky, US
`Weekly, InStyle, Vogue, People, the New York Times, and the Wall Street Journal, and is worn
`by celebrities such as Kate Bosworth, Nicole Richie, Cameron Diaz, Kelly Osbourne, Selma
`Blaire, Amanda Bynes, Juliette Lewis, Mariah Carey, Fergie, Lake Bell, Ashlee Simpson, Mary-
`Kate Olsen, Kate Moss, Keira Knightly, and Sienna Miller.
`
`Arcadia has expended considerable resources towards establishing and protecting its
`3.
`Valuable TOPSHOP names and marks worldwide and owns international trademark registrations
`for them in, among others, the following countries : Algeria, Australia, Bahrain, Benelux, China,
`Croatia, Cyprus, Czech Republic, Denmark, Estonia, European Union, Finland, France,
`Germany, Gibraltar, Greece, Guernsey, Hong Kong, Hungary, Iceland, Indonesia, Ireland, Israel,
`Italy, Japan, Jordan, Lebanon, Malta, Morocco, New Zealand, Peru, Philippines, Poland,
`Portugal, Russia, Singapore, Slovenia, South Africa, South Korea, Spain, Switzerland, Taiwan,
`Turkey, United Arab Emirates, United Kingdom, United States and Yemen (collectively, the
`“TOPSHOP Family of Marks”). All of the foregoing TOPSHOP names and marks are Valid and
`subsisting and in full force and effect in connection with clothing, accessories, retail store
`services and related goods and services.
`
`Arcadia is also the owner of U.S. Registration No. 3,237,860 for the mark TOPSHOP,
`4.
`issued May 1, 2007, covering ‘‘women’s clothing, namely skirts dresses, pants, tops and jacket.”
`
`(9th Cir. 1998); London v. Coopers & LY Brand, 644 F.2d 811 (9th Cir. 1981)), Arcadia
`repleads and incorporates herein the dismissed paragraphs ll, l2, l3, and 18 for the sole
`purpose of preserving its claims.
`
`

`
`Arcadia is the owner of U.S. Registration No. 3,524,208 for the mark TOP SHOP, issued
`5.
`October 28, 2008, covering “jewelry, namely, necklaces, rings, earrings, bracelets, bangles and
`pendants” based upon the priority established by United Kingdom Registration No. 1,522,280.
`
`Arcadia is the owner of U.S. Registration No. 3,524,207 for the mark TOP SHOP, issued
`6.
`October 28, 2008, covering “sunglasses and accessories for sunglasses, namely, neck cords
`which restrain sunglasses from movement on a wearer, and parts for the above goods” based
`upon the priority established by United Kingdom Registration No. 1,522,759, issued December
`21,1992.
`
`Arcadia is the owner of U.S. Registration No. 3,552,730 for the mark TOPSHOP, issued
`7.
`December 30, 2008, covering “Hand bags; shoulder bags; leather canvas and mesh shopping
`bags; clutch bags; tote bags; trolley bags for travel with wheels attached; envelope bags of
`leather, namely, a bag having a closure flap for carrying personal articles-; holdalls; purses;
`wallets; Satchels; leather pouches; vanity cases sold empty; leather passport holders; and leather
`passport covers.”
`
`Arcadia is the owner of U.S. Application Serial No. 78/631,860 for the mark TOP SHOP
`8.
`covering “retail store services and online retail store services featuring clothing, footwear, hair
`accessories, bags, millinery, jewelry, imitation jewelry, watches, eyewear and sporting clothing.”
`Arcadia is using and has used the mark TOP SHOP for online retail store services in the United
`States since 1998. Nevertheless, despite Arcadia’s earlier use of the TOPSHOP mark in the
`United States, Studio Moderna’s Registration has, to date, delayed Arcadia’s registration of its
`mark in the USPTO.
`
`Beginning no later than 1998, via its websites www.topshop.co.uk and then also
`9.
`www.topshop.com, Arcadia has offered services in the United States which can be construed to
`be within those recited in the Registration and in Class 35 of the Application. Specifically,
`Arcadia has used — and is using —- its TOPSHOP names and marks for the on-line retail sale of
`goods, which would facially qualify as a category of general consumer merchandise. A printout
`from the home page of Arcadia’s www.topshop.com website reflecting Arcadia’s current
`merchandise
`for
`sale
`is
`attached
`hereto
`as
`Exhibit
`A.
`(See
`http://us.topshop.com/webapp/wcs/stores/servlet/TopCategoriesDisplay?storeld=1 3052&catalog
`ld=32051 (last visited April 5, 2010)).
`
`According to the Statement of Use submitted in connection with the Registration, Studio
`10.
`Moderna did not commence use of the TOP SHOP TV mark in connection with the services
`identified in the Registration and in Class 35 of the Application until September 7, 2007, nearly
`ten years after Arcadia began offering online retail services under its TOPSHOP name and mark
`in the United States and well after Arcadia’s name became well-known among United States
`consumers.
`
`On or about April 29, 2004, Studio Moderna and Arcadia entered into a coexistence
`I 1.
`agreement (the “Agreement”), which enumerates, among other things,
`the manner(s) in which
`the parties can use and register the TOPSHOP name and mark. The Agreement also is intended
`
`

`
`to avoid any likelihood of confusion between the parties’ respective marks and goods. A copy of
`the Agreement is attached as Exhibit B.
`
`Pursuant to the Agreement, Studio Moderna agreed, among other things, “not to use the
`12.
`mark TOP SHOP for designation of goods from class 25 of Nice classification (articles of
`clothing, footwear and headgear) in any country. ” (Ex. B, 1] 2.)
`
`Studio Moderna ’s use and registration ofthe TOP SHOP TV mark and/or TOP SHOP TV
`13.
`& Design in connection with “on-line retail services in the field of general consumer
`merchandise” in International Class 35 can be construed to include articles of clothing,
`footwear and headgear and therefore violate the spirit and the terms set forth in the Agreement
`and the understanding of the parties when they entered into such Agreement. Additionally, the
`documents produced by Studio Moderna in discovery reveal that Studio Moderna is marketing
`articles of clothing, footwear and other Class 25 goods under the TOP SHOP TV name and
`mark.
`
`Because the phrase “general consumer merchandise” is so broad, Studio Moderna’s retail
`14.
`services would include the sale of merchandise so similar to Arcadia’s merchandise that it is
`likely to cause confusion, mistake, or deception in the minds of the purchasing public as to the
`source or origin of Studio Modema’s services, especially in view of Arcadia’s long prior use of
`its TOPSHOP Family of Marks and well developed secondary meaning therein.
`
`Notwithstanding the restrictions in the Agreement and Arcadia’s use and the fame of its
`15.
`TOPSHOP Family of Marks, on February 25, 2008, Studio Moderna filed applications for the
`marks TOP SHOP in International Classes 35, 38, and 41 (U.S. Application Serial No.
`77/405,680),.and TOP SHOP TV in International Classes 35, 38, and 41 (U.S. Application Serial
`No. 77/405,689).
`Such new applications demonstrate further progressive encroachment on
`Arcadia’s rights, as well as a bad faith intent to appropriate Arcadia’s goodwill, because Studio
`Moderna is aware — from the numerous documents produced by Arcadia during discovery — that
`Arcadia has been using the mark TOP SHOP for online retail services in the United States since
`1998, and its flagship store in the United States is now open.
`
`Arcadia will be damaged, and is likely to suffer damage and/or injury, if Studio Moderna
`16.
`is permitted to register the mark in the Application and/or continues to own the Registration
`because, among other things, (a) the Registration is an impediment to Arcadia’s right to own a
`registration in the USPTO for its TOPSHOP name and mark in connection with its online and
`other retail services, notwithstanding Arcadia’s prior use, (b) Studio Moderna’s use and/or
`registration of the TOP SHOP TV mark in connection with goods that categorically encompass
`clothing,
`footwear and headgear is a breach of Studio Moderna’s obligations under the
`Agreement, and (c) Arcadia will suffer damage and/or injury to its reputation by the confusion
`which will result in the marketplace.
`
`Claims Specific To Studio Moderna’s Registration
`
`Contrary to Studio Moderna’s Statement of Use, any use of Studio Moderna’s TOP
`17.
`SHOP TV mark prior to filing its Statement of Use was merely “token use” of the mark and not
`
`

`
`in fact a bona fide use in the ordinary course of trade, making the registration void ab initio.
`Accordingly, Studio Moderna’s Registration should be cancelled for nonuse.
`
`Even if Studio Moderna’s use could otherwise be construed a bona fide use in the
`18.
`ordinary course oftrade for purposes ofregistration, Studio Moderna ’s description ofservices is
`overly broad and indefinite and, contrary to its Statement of Use, Studio Moderna has not used
`and is not using the TOP SHOP TV mark to sell the wide range ofproducts as set forth in the
`Registration. Infact, as ofthe date Studio Modernafiled its Statement of Use, Studio Moderna ’s
`purported offerings were limited to five items:
`the “Nicer Dicer” dicing kitchenware,
`the
`“Pancake Pujfs” kitchen pan,
`the “Sonic Blade” kitchen knife,
`the “Germ Free 60” hand-
`cleaning solution, and the “Kosmodisk Classic” back remedy. Accordingly, Studio Moderna’s
`Registration should be cancelled because it should not be permitted to own a registrationfor on-
`line retail services of all categories of general consumer merchandise,
`including those that it
`does not sell and has never sold, and such conduct may rise to the level offraud.
`
`Even if Studio Moderna’s use could otherwise be construed a bona fide use in the
`19.
`ordinary course of trade for purposes of registration, Studio Moderna’s description of services is
`overly broad and indefinite. Studio Moderna is not using its TOP SHOP TV mark to sell the
`wide range of products set forth in the Registration.
`In fact, as of the date Studio Moderna filed
`its Statement of Use, almost five (5) years after it filed its trademark application, Studio
`Moderna’s purported offerings were limited to five items: the “Nicer Dicer” dicing kitchenware,
`the “Pancake Puffs” kitchen pan, the “Sonic Blade” kitchen knife, the “Germ Free 60” hand-
`cleaning solution, and the “Kosmodisk Classic” back remedy.
`
`Studio Moderna’s Registration should be restricted and/or modified pursuant to Section
`20.
`18 to cover “On-line retail store services featuring dicing kitchenware, kitchen pan, kitchen
`knife, hand cleaning solution, and back remedy,” which will avoid a likelihood of confusion with
`Arcadia’s TOPSHOP marks. At the very least, upon information and belief, Studio Moderna has
`only used its TOP SHOP TV mark to sell consumer household products of others. Accordingly,
`in the alternative, Studio Moderna’s Registration should be restricted and/or modified pursuant
`to Section 18 to cover “On-line retail store services featuring consumer household products of
`others, and excluding clothing, footwear, headgear, and accessories,” which will avoid a
`likelihood of confusion with Arcadia’s TOPSHOP marks.
`
`Claims Specific T0 Studio Moderna’s Application
`
`Studio Moderna’s Application is based upon Section 44 of the Lanham Trademark Act of
`21.
`1946. Accordingly, the description of goods in the Application cannot include goods that are not
`included in the description of goods in the Swiss registration upon which Studio Moderna’s U.S.
`Application is based.
`
`The goods and services covered in Studio Moderna’s U.S. Application exceed the scope
`22.
`of goods covered in its Swiss Registration No. 514582 upon which its U.S. application is based.
`For instance, Studio Moderna’s TOP SHOP TV & Design mark is not registered in Switzerland
`for “on-line retail services and electronic catalog services in the field of general consumer
`
`

`
`merchandise,” which its U.S. Application seeks to cover. Studio Moderna, therefore, is not
`entitled to obtain the U.S. registration which it seeks on the basis of its Swiss registration.
`
`WHEREFORE, Arcadia believes that it is likely to be damaged by U.S. Registration No.
`3,389,652 and U.S. Application Serial No. 78/239,078, and Arcadia respectfully requests that the
`mark shown in such registration and application be cancelled and that
`this Amended
`Consolidated Notice of Opposition and Petition to Cancel be sustained.
`
`Respectfully submitted,
`
` Floyd A. Mand 1
`
`William J. Do ey
`Cathay Y. N. Smith
`KATTEN MUCHIN ROSENMAN LLP
`
`Attorneys for Arcadia
`525 West Monroe Street
`
`Chicago, Illinois 60661
`(312) 902-5200
`
`Dated: April 5, 2010
`
`

`
`Exhibit A
`
`Arcadia Group Brands Ltd. v. Studio Moderna SA,
`Opposition No. 91169226, Cancellation No. 92049146 (as consolidated)
`
`Opp0ser—Petitioner’s Exhibit to
`Arcadia ’s Second Amended Consolidated Notice of Opposition and
`Petition to Cancel
`
`

`
`_l
`
`.
`
`_
`
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`
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`
`Ir.n-|:m-:‘.
`
`5“
`
`HEWIN
`
`FEATEREE
`
`¢flLLFCT|UN5
`
`3LfiG
`
`IT'S BUR
`
`NEW YORK
`
`FIRST
`
`BIRTHDAY
`
`AND YOU'RE
`
`INVITED!
`
`Aprli End — MIT
`
`himmner
`FE If-E
`JUETIH
`
`

`
`Exhibit B
`
`Arcadia Group Brands Ltd. v. Studio Moderna SA,
`Opposition No. 91 169226, Cancellation No. 92049146 (as consolidated)
`
`Opposer-Petitioner’s Exhibit to
`Arcadia ’s Second Amended Consolidated Notice of Opposition and
`Petition to Cancel
`
`

`
`‘AGREEMENT
`
`Concerning the use oftrademark TOP SHOP (includ_:i'ng word mark or any kind ofa device
`mark including the words TOP SH-OP, hereinafter »-the mark TOP SH-OP«_) made on 29th of
`April 2004, between:
`
`Studio Mod-erna, Finanéne in" intelel_ctt1alne‘" storitve, ter trgovina d.-o.o., Costa 9. avgusta 4,
`Zagorje, SI (hereinafter Studio Moclerna) and
`
`Arcadia Group Brands Limited, Coflegrave House, 70 Berners Street, London WIP SAE,
`GB also on behalf of their subsidiaries, (hereinafter Arcadia Group).
`
`Whereas:
`
`SHOP'for"designation ofjgoods
`1. Studio Moderna undertakes not to use the mark
`from class 25 ofNice classification (articles of clothing, footwear and headgear) in
`
`any country.
`
`2. Arcadia Group undertakes not to use the mark TOP SHOP for designation of goods
`from class 10 of Nice classification (surgical, medical, dental and veterinary apparatus
`and in-struments, artificial limbs, eyes and teeth; orthopedic articles; suture materials)
`in any country, except the United Kingdom and Republic ofIreland.
`
`3. Arcadia Group undertakes not to oppose registration ofInternational trademark
`registration No. 742982 in Greece and in Estonia, and not to file appeal against the
`Turkish Trade mark registry’s decision pertaining International trademark registration
`No. 742982 in Turkey.
`
`. 4. Both parties agree, in case of any future conflict regarding the use or registration of
`»the mark TOP SHOP« in any country, to inform each other about the situation in
`order to try settling the conflict in an amicable way, before commencing any
`administrative and legal procedures in that regard.
`
`On behalf of
`Studio Moderna d.o.o.
`Z-agorje, SI
`
`/’
`
`Signed
`
`Place and Date: 3/H535? '
`
`I
`
`'
`
`‘-
`
`On behalf of
`Arcadia Group Brands Limited,
`London, GB
`also on behalf oftheir subsyiaries
`Signed by:
`d» y
`‘
`
`
`
`Place and Date: [.orvDo/\/
`
`lo (6)/04,’
`
`

`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on this 5th day of April, 2010, I caused a true and correct copy of
`the foregoing to be served upon:
`
`Mr. Mitchell P. Brook
`
`Mr. Eric L. Lane
`
`Luce, Forward, Hamilton & Scripps LLP
`600 West Broadway, Suite 2600
`San Diego, CA 92101
`
`Mr. Michael H. Bierman
`
`Mr. Jeffrey D. Wexler
`Luce, Forward, Hamilton & Scripps LLP
`601 S. Figueroa St., 39th Floor
`Los Angeles, CA 90017
`
`Mr. Christopher C. Larkin
`Seyfarth Shaw LLP
`One Century Plaza, Suite 3500
`2029 Century Park East
`Los Angeles, CA 90067
`
`
`
` Cathay Y. N. S 1th
`
`via E-mail and First Class Mail, postage prepaid.