Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA163796
`ESTTA Tracking number:
`09/19/2007
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91172575
`Plaintiff
`GMA Accessories, Inc.
`Medea B. Chillemi
`The Bostany Law Firm
`40 Wall Street- 61st Floor
`New York, NY 10005
`UNITED STATES
`andrew.sweeney@bozlaw.com
`Motion to Amend Pleading/Amended Pleading
`Adrienne S. Kosta
`akosta@bozlaw.com
`/ASK/
`09/19/2007
`MotiontoAmend.9.19.07.pdf ( 2 pages )(75448 bytes )
`NoticeofOpposition.Amended.9.19.07.pdf ( 5 pages )(187546 bytes )
`ProofofService.9.19.07.pdf ( 1 page )(23836 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`
`ESTTA163796
`ESTTA Tracking number:
`09/19/2007
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91172575
`Plaintiff
`GMA Accessories, Inc.
`Medea B. Chillemi
`The Bostany Law Firm
`40 Wall Street- 61st Floor
`New York, NY 10005
`UNITED STATES
`andrew.sweeney@bozlaw.com
`Motion to Amend Pleading/Amended Pleading
`Adrienne S. Kosta
`akosta@bozlaw.com
`/ASK/
`09/19/2007
`MotiontoAmend.9.19.07.pdf ( 2 pages )(75448 bytes )
`NoticeofOpposition.Amended.9.19.07.pdf ( 5 pages )(187546 bytes )
`ProofofService.9.19.07.pdf ( 1 page )(23836 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
`
`E§ilI&XéEE's'é61éiEéf£l§é‘.j"""""""""""""""""X
`
`Plaintiff—Opposer,
`
`—
`
`against —
`
`MOTION TO AMEND
`
`WRIGHT MEDICAL TECHNOLOGY, INC.,
`
`Opposition No. 91172575
`
`Defer1dant—Applicant.
`__________________________________________________________ __X
`
`Applicant’s Mark: CHARLOTTE
`Serial No.: 76621053
`
`Filing Date: Nov. 18, 2004
`Filing Type: ITU
`Class: 10
`
`ADRIENNE S. KOSTA hereby declares, under penalty of perjury pursuant to 28
`
`U.S.C. § 1746, as follows:
`
`1.
`
`2.
`
`I am an associate in The Bostany Law Firm, attorney for Petitioner.
`
`I respectfully submit this declaration in support of Plaintiffs Motion to
`
`Amend its Pleadings.
`
`3.
`
`Pleadings in an opposition proceeding may be amended “in the same
`
`manner and to the same extent as in a civil action in a United States district court.”
`
`37 CFR § 2.107. “A party may amend the party’s pleading by leave of court ...and leave
`
`shall be freely given when justice so requires.” Fed. R. Civ. P. 15(a).
`
`4.
`
`We seek to merely notify the Defendant—App1icant of an additional claim
`
`to the Opposition proceeding. We respectfully request that the additional claim of
`
`dilution be permitted as an additional basis for the Opposition. A mark likely to cause
`
`dilution by blurring or tarnishment under section 1 125(0) of the Lanham Act may be
`
`refused registration. 15 U.S.C. § 1052(t).
`
`
`
`5.
`
`Here, the Defendant seeks to use the exact same trademark as the
`
`Plaintiff to identify a different category of products. It is respectfully alleged that if the
`
`Defendant was permitted to accomplish this, the capacity of the CHARLOTTE mark to
`
`identify Plaintiffs goods would become diluted and diminished as the public will begin
`
`to associate the mark with Defendant’s products, i.e. prosthetic devices.
`
`6.
`
`The standard for a motion of this nature is liberal and allows
`
`amendments where as here the claim is reasonable and logical. GMA Accessories, Inc.
`
`U. DML Marketing Group, Ltd., 229 F.R.D. 71 (S.D.N.Y. 2005).
`
`7.
`
`Pursuant to Rule l5(a), leave to amend is to be freely given when justice
`
`so requires. Forman U. Davis, 371 U.S. 178, 182 (1962); Rachman Bag Co. 11. Liberty
`
`Mumal Ins. Co., 46 F.3d 230, 234 (2d Cir. 1995).
`
`WHEREFORE, we respectfully ask that Plaintiff be permitted to file the attached
`
`Amended Notice of Opposition.
`
`Dated: New York, New York
`September 19, 2007
`
`Respectfully submitted,
`THE BOSTANY LAW FIRM
`
` a/<1./5
`
`By: Adrienne S. Kost/a
`Attorneys for Petitioner
`40 Wall Street ~ 61st Floor
`
`New York, New York 10005
`(2 12) 530-4400
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`_ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _..X
`
`GMA ACCESSORIES, INC.,
`
`Plaintiff—Opposer,
`
`—
`
`against ~
`
`AMENDED NOTICE OF
`OPPOSITION
`
`Opposition No. 91172575
`
`WRIGHT MEDICAL TECHNOLOGY, INC.,
`
`Defendant—Applicant.
`_ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ .__X
`
`Applicant’s Mark: CHARLOTTE
`Serial No.: 76621053
`
`Filing Date: Nov. 18, 2004
`Filing Type: ITU
`Class: 10
`
`Opposer GMA Accessories, Inc. (“GMA”), through its undersigned counsel
`
`of record, hereby opposes the above noted application of WRIGHT MEDICAL
`
`TECHNOLOGY, INC. (the “Applicant”) and in support thereof respectfully
`
`submits as follows:
`
`FACTS
`
`1.
`
`GMA is the current title owner of the registered mark CHARLOTTE
`
`in International Classes 9 (Reg. #2,561,025), 18 (Reg. #2,2 17,341), 25 (Reg.
`
`#2,535,454), and 26 (Reg. #2,216,405), all of which have been deemed
`
`incontestable.
`
`2.
`
`GMA does business as CAPELLI NEW YORK.
`
`
`
`3.
`
`Each of these registrations pre—date the defendant—applicant’s
`
`subject intent to use application which was filed on Nov. 18, 2004.
`
`4.
`
`In November of 2001, GMA was assigned all rights to Registration
`
`# 1 135037.
`
`5.
`
`GMA is also the current title owner of CHARLOTTE in Class 22
`
`(Reg. #3,242,358).
`
`6.
`
`The GMA Marks consist of words only, with the dominant word
`
`CHARLOTTE prominently appearing in block letters.
`
`7.
`
`The use of the word CHARLOTTE in the GMA Marks in connection
`
`with GMA’s products is arbitrary.
`
`8.
`
`GMA Marks has used CHARLOTTE, on a nationwide basis, in
`
`connection with GMA’s products since 1996, and through its assignee since
`
`1979. GMA has incurred substantial expense in promoting and advertising its
`
`products under the GMA Marks.
`
`9.
`
`The Applicant has not yet begun use in commerce of the mark it
`
`seeks to register as an “intent to use” application.
`
`10.
`
`The Applicant’s Mark consists of Words only and prominently
`
`incorporates the Word CHARLOTTE in block lettering.
`
`COUNT I — LIKELIHOOD OF CONFUSION
`
`11.
`
`In determining whether there is a likelihood of confusion, courts
`
`will consider whether the marks themselves are similar in appearance, sound,
`
`connotation and commercial impression.
`
`In re. E. I. Dupont de Nemurs & C0,,
`
`476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
`
`
`
`12.
`
`The goods of the parties need not be identical or directly
`
`competitive to find a likelihood of confusion.
`
`In re Martin’s Famous Pastry
`
`Shoppe, Inc., 748 F. 2d 1565, 223 USPQ 1289 (Fed Cir. 1984); In re Corning
`
`Glass Works, 229 USPQ 65 (TTAB 1985); In re Rexel, Inc., 223 USPQ 830 (TTAB
`
`1984); Guardian Products Co., Inc. 12. Scott Paper Co., 200 USPQ 738 (TTAB
`
`1978); In re International Telephone & Telegraph Corp., 197 USPQ 910 (TTAB
`
`1978)
`
`13.
`
`The Applicar1t’s Mark is similar to the GMA Marks in appearance,
`
`sound, connotation and commercial impression.
`
`14. Any doubt regarding the likelihood of confusion must be resolved
`
`in favor of the prior registrant.
`
`In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463,
`
`6 USPQ 2d 1025 (Fed. Cir. 1988).
`
`15.
`
`The registration and use by the applicant of the CHARLOTTE mark
`
`to identify medical products and promotion of the mark CHARLOTTE with
`
`respect to medical devices will undoubtedly create confusion with the opposer’s
`
`long standing CHARLOTTE brand name which has been registered in 9
`
`separate classes for many years.
`
`16.
`
`A mark shall be refused registration if it is likely to cause
`
`confusion. 15 U.S.C. § 1052(d).
`
`COUNT II - DILUTION
`
`17.
`
`GMA repeats and realleges the allegations of paragraphs 1 through
`
`16 as if fully set forth herein.
`
`
`
`18.
`
`GMA will be damaged by the registration of the Applicant’s mark
`
`because the mark will likely cause dilution by blurring and tarnishment
`
`pursuant to section 1 125(c) of the Lanham Act. 15 U.S.C. § 1063(a).
`
`19.
`
`A mark likely to cause dilution by blurring or tarnishment under
`
`section 1 125(c) of the Lanham Act may be refused registration. 15 U.S.C. §
`
`1052(f).
`
`20.
`
`A trademark owner may seek an injunction “against another
`
`person who, at any time after the owner’s mark has become famous,
`
`commences use of a trade name in commerce that is likely to cause dilution by
`
`blurring or dilution by tarnishment of the famous mark, regardless of the
`
`presence or absence of actual or likely confusion, of competition or of actual
`
`economic injury.” Dan—Foam A/ S and Tempur—Pedic, Inc., 12. Brand Named Beds,
`
`LLC, 2007 WL 1346609 at * 9 (S.D.N.Y. 2007) citing 15 U.S.C. § 1125(c)(1).
`
`21.
`
`The fame requirement is evaluated pursuant to the following
`
`factors: (1) duration, extent, and geographic reach of advertising and publicity
`
`of the mark, whether advertised or publicized by the owner or third parties; (2)
`
`amount, volume, and geographic extent of sales of goods or services offered
`
`under the mark; (3) extent of actual recognition of the mark; and (4) whether
`
`the mark was registered under the Act of March 3, 1881, or the Act of February
`
`20, 1905, or on the principal register. Id. citing 15 U.S.C. § 1125(c)(2)(A).
`
`22. Here the Charlotte mark is inherently distinctive, incontestable,
`
`arbitrary and strong. GMA Accessories, Inc. v. Bop LLC, 2007 WL 2483507 at *2
`
`
`
`(S.D.N.Y. 2007). There has also been extensive advertisement and promotion of
`
`Plaintiff’s CHARLOTTE mark.
`
`23.
`
`Plaintiffs CHARLOTTE mark is famous.
`
`24. Defendant’s use of its stylized form of the CHARLOTTE mark is
`
`likely to cause dilution. See, e. g., Savin Corp. v. Savin Group, 391 F.3d 439, 452
`
`(2d Cir. 2004) (Use of by defendant of the same mark is “per se evidence of
`
`actual di1ution.”) “Like being stung by a hundred bees, significant injury is
`
`caused by the cumulative effect, not by just one.” Id. at 449. See also Dan
`
`Foam A/S and Tempur—Pedic, Inc., 2007 WL 1346609 at * 9 citing 15 U.S.C. §
`
`1125(c)(2)(A).
`
`WHEREFORE, GMA respectfully requests that the Defendant-Applicant be
`
`refused registration of the above mentioned mark.
`
`Dated:
`
`New York, New York
`September 19, 2007
`
`Respectfully submitted,
`THE BOSTANY LAW FIRM
`
`M g
`
`By: Adrienne S. Kosta
`
`40 Wall Street —— 61st Floor
`
`New York, New York 10005
`(2 12) 530-4400
`Attorneys for Plaintiff—Opposer
`
`
`
`Certificate of Service
`
`I, Adrienne S. Kosta, hereby certify that the within Motion to Amend and
`Amended Notice of Opposition is being deposited with the United States Postal
`Service on September 19, 2007, postage pre—paid, to counsel for Defendant-
`Applicant as follows:
`
`Maxim Voltchenko, Esq.
`Duane Morris LLP
`
`30 South 17th Street
`
`Philadelphia, PA 19103-4 196
`Attorneys for Defendant~Applicant
`
` A ‘fienne S. Kosta
`
`The Bostany Law Firm
`40 Wall Street
`
`New York, New York 10005
`Attorneys for Plaintiff—Opposer
`GMA Accessories, Inc.
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
