Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA261292
`ESTTA Tracking number:
`01/19/2009
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`Notice of Opposition
`
`Notice is hereby given that the following party opposes registration of the indicated application.
`Opposer Information
`
`Name
`Granted to Date
`of previous
`extension
`Address
`
`Swank, Inc.
`01/17/2009
`
`90 Park Avenue
`New York,, NY 10016
`UNITED STATES
`
`Correspondence
`information
`
`Paul Fields, Esq.
`Darby & Darby PC
`7 World Trade Center 250 Greenwich Street
`New York City, NY 10007
`UNITED STATES
`tmdocket@darbylaw.com, arubinstein@darbylaw.com, pfields@darbylaw.com
`Phone:212-527-7700
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`77506637
`01/19/2009
`
`Publication date
`Opposition
`Period Ends
`
`11/18/2008
`01/17/2009
`
`Motorola, Inc.
`1303 E. Algonquin Road
`Schaumburg, IL 60196
`UNITED STATES
`Goods/Services Affected by Opposition
`
`Class 009.
`All goods and services in the class are opposed, namely: Cellular telephones
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`Dilution
`
`Trademark Act section 2(d)
`Trademark Act section 43(c)
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`Registration Date
`
`3448767
`
`06/17/2008
`
`Word Mark
`
`SWANK
`
`Application Date
`
`10/12/2007
`
`Foreign Priority
`Date
`
`NONE
`
`
`ESTTA261292
`ESTTA Tracking number:
`01/19/2009
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`Notice of Opposition
`
`Notice is hereby given that the following party opposes registration of the indicated application.
`Opposer Information
`
`Name
`Granted to Date
`of previous
`extension
`Address
`
`Swank, Inc.
`01/17/2009
`
`90 Park Avenue
`New York,, NY 10016
`UNITED STATES
`
`Correspondence
`information
`
`Paul Fields, Esq.
`Darby & Darby PC
`7 World Trade Center 250 Greenwich Street
`New York City, NY 10007
`UNITED STATES
`tmdocket@darbylaw.com, arubinstein@darbylaw.com, pfields@darbylaw.com
`Phone:212-527-7700
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`77506637
`01/19/2009
`
`Publication date
`Opposition
`Period Ends
`
`11/18/2008
`01/17/2009
`
`Motorola, Inc.
`1303 E. Algonquin Road
`Schaumburg, IL 60196
`UNITED STATES
`Goods/Services Affected by Opposition
`
`Class 009.
`All goods and services in the class are opposed, namely: Cellular telephones
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`Dilution
`
`Trademark Act section 2(d)
`Trademark Act section 43(c)
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`Registration Date
`
`3448767
`
`06/17/2008
`
`Word Mark
`
`SWANK
`
`Application Date
`
`10/12/2007
`
`Foreign Priority
`Date
`
`NONE
`
`
`
`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 035. First use: First Use: 1984/02/15 First Use In Commerce: 1984/02/15
`Retail store services in the field of jewelry, belts, wallets, umbrellas and
`briefcases
`
`U.S. Registration
`No.
`Registration Date
`
`3425568
`
`05/13/2008
`
`Word Mark
`Design Mark
`
`SWANK
`
`Application Date
`
`05/01/2007
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 003. First use: First Use: 1975/00/00 First Use In Commerce: 1975/00/00
`Shoe cleaner sets consisting primarily of shoe polish, shoe polish applicators,
`and shoe brushes
`Class 014. First use: First Use: 1927/07/01 First Use In Commerce: 1927/07/01
`Items of men's jewelry, namely, collar pins; jewelry cases not made of precious
`metal; collar holders formed wholly or in part of precious metal; jewelry for
`personal wear, not including watches, namely, cuff links, dress sets consisting of
`cufflinks and matching studs, tie holders, key rings made in whole of, in part of,
`or plated with precious metal
`Class 016. First use: First Use: 1927/07/01 First Use In Commerce: 1927/07/01
`Money clips
`Class 018. First use: First Use: 1935/05/21 First Use In Commerce: 1935/05/21
`Wallets, billfolds, key cases, fitted traveling cases, tie cases, luggage
`accessories, namely luggage tags
`Class 020. First use: First Use: 1935/05/21 First Use In Commerce: 1935/05/21
`Tie racks
`Class 021. First use: First Use: 1935/05/21 First Use In Commerce: 1935/05/21
`
`
`
`Military-style hair brush sets, clothes brush sets, brush and shoe brush sets
`Class 025. First use: First Use: 1934/03/04 First Use In Commerce: 1934/03/04
`Belts in the nature of garment supporters and for outer wear; suspenders
`Class 026. First use: First Use: 1927/07/01 First Use In Commerce: 1927/07/01
`Belt buckles
`
`U.S. Registration
`No.
`Registration Date
`
`1131853
`
`03/11/1980
`
`Application Date
`
`08/28/1978
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`SWANK
`
`NONE
`
`Class 025. First use: First Use: 1978/08/10 First Use In Commerce: 1978/08/10
`NECKWEAR
`
`Attachments
`
`77303155#TMSN.jpeg ( 1 page )( bytes )
`77169842#TMSN.jpeg ( 1 page )( bytes )
`Notice of Opposition (as filed).PDF ( 6 pages )(21383 bytes )
`
`The undersigned hereby certifies that a copy of this paper has been served upon all parties, at their address
`record by First Class Mail on this date.
`
`Certificate of Service
`
`Signature
`Name
`Date
`
`/Abigail Rubinstein/
`/Abigail Rubinstein/
`01/19/2009
`
`
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`File No.: 07335/7001511-000
`
`
`
`
`Opposition No. _____________
`Application Ser. No. 77/506,637
`Published in the Official Gazette on
`November 18, 2008
`Filing Date: June 24, 2008.
`
`)))))))))))
`
`
`------------------------------------------
`
`NOTICE OF OPPOSITION
`
`Swank, Inc. (“Opposer”), a Delaware corporation located at 90 Park
`
`
`
`Avenue, New York, New York 10016, believes it will be damaged by the registration of
`
`the designation SWANK as shown in Application Serial No. 77/506,637 (the “ ’637
`
`App.”) for use in connection with cellular telephones, filed by Motorola, Inc.
`
`(“Applicant”) and hereby opposes the same. An extension of time to oppose the ‘637
`
`Application has been granted until January 17, 2009 on behalf of Opposer.
`
`
`
`The grounds for opposition are:
`
`1.
`
`Continuously since at least as early as 1984, Opposer has operated retail
`
`stores in the United States and has provided retail store services under the SWANK
`
`name. The stores sell various items including jewelry, belts, wallets, umbrellas, and
`
`briefcases and other related goods such as leather cases for cellular telephones. The
`
`name and mark SWANK appears on the façade of and is used within the stores.
`
`2.
`
`Since long prior to the filing date of the ‘637 App., Opposer has used
`
`SWANK in the United States in connection with the promotion and sale of a wide variety
`1
`
`
`
`3699210.1 7001511-000
`
`Opposer,
`
`
`
`v.
`
`
`SWANK, INC.,
`
`
`
`
`
`
`MOTOROLA, INC.,
`
`
`
`Applicant.
`
`
`
`
`
`
`
`of goods including but not limited to, jewelry, cuff links, dress sets, tie holders, collar
`
`pins, and key rings; neckwear; wallets, luggage accessories, military brush sets, clothes
`
`brush sets, belts, suspenders, belt buckles, and mechanical pens and pencils.
`
`
`
`3.
`
`Opposer has spent large sums of money and expended tremendous effort
`
`in promoting products and rendering services under its SWANK marks, which marks
`
`have become extremely well known and famous and are associated exclusively with
`
`Opposer and its products and services. The goodwill of the business connected with the
`
`use of, and symbolized by, the SWANK marks is an asset of incalculable value.
`
`
`
`4.
`
`Opposer is the sole owner, inter alia, of the following United States
`
`trademark registrations and of all the business and goodwill connected with said marks
`
`issued on the dates and under the number set out beside them. The following SWANK
`
`marks are now in full force and effect and have not been canceled.
`
`TRADEMARK
`
`SWANK
`
`REGISTRATION
`DATE
`June 17, 2008
`
`REGISTRATION
`NUMBER
`3448767
`
`SWANK
`
`May 13, 2008
`
`3425568
`
`
`
`2
`
`GOOD/SERVICES
`
`retail store services
`in the field of
`jewelry, belts,
`wallets, umbrellas
`and briefcases
`Shoe cleaner sets
`consisting primarily
`of shoe polish, shoe
`polish applicators,
`and shoe brushes in
`Class 3;
`
`Items of men's
`jewelry, namely,
`collar pins; jewelry
`cases not made of
`precious metal;
`collar holders
`formed wholly or in
`part of precious
`metal; jewelry for
`personal wear, not
`including watches,
`
`3699210.1 7001511-000
`
`
`
`namely, cuff links,
`dress sets consisting
`of cufflinks and
`matching studs, tie
`holders, key rings
`made in whole of, in
`part of, or plated
`with precious metal
`in Class 14;
`
`Money clips in
`Class 16;
`
`Wallets, billfolds,
`key cases, fitted
`traveling cases, tie
`cases, luggage
`accessories, namely
`luggage tags in
`Class 18;
`
`Tie racks in Class
`19;
`
`Military-style hair
`brush sets, clothes
`brush sets, brush
`and shoe brush sets
`in Class 21;
`
`Belts in the nature
`of garment
`supporters and for
`outer wear;
`suspenders in Class
`25;
`
`Belt buckles in
`Class 26.
`neckwear
`
`SWANK
`
`March 11, 1980
`
`1131853
`
`5. On June 24, 2008, long after Opposer’s first use of its SWANK mark,
`
`
`
`Applicant filed application Serial No. 77/506,637 to register SWANK in respect of
`
`“cellular telephones.” The ‘637 App. is based on intent to use and an Amendment to
`
`Allege Use has not yet been filed.
`
`
`3
`
`3699210.1 7001511-000
`
`
`
`6.
`
`The filing date of the ‘637 App. is subsequent to Opposer’s first use of its
`
`SWANK mark.
`
`7.
`
`Upon information and belief, Applicant's SWANK mark so resembles
`
`Opposer's SWANK mark such that consumers are likely to conjure an association
`
`between Applicant’s Mark and Opposer’s SWANK marks and are likely to be confused,
`
`mistaken and deceived into believing that the goods of Applicant are provided,
`
`sponsored, licensed or approved by Opposer, that Applicant’s and Opposer’s goods
`
`emanate from the same source and/or that Applicant is in some other fashion connected
`
`or associated with Opposer, all to Opposer’s injury.
`
`
`
`9.
`
`Upon information and belief, registration of Applicant’s SWANK mark
`
`will diminish and dilute the famous and distinctive quality of Opposer’s famous
`
`trademark SWANK because one viewing Applicant’s Mark will associate the trademark
`
`SWANK with Opposer less strongly or exclusively, or conclude that the SWANK
`
`products of Opposer are now associated with a new product or service, resulting in
`
`damage to Opposer.
`
`
`
`10.
`
`Registration of the ‘637 App. by Applicant is barred by the provisions of
`
`15 U.S.C. § 1052(d), for the reason that it consists of or comprises a mark which so
`
`resembles Opposer’s SWANK mark as to be likely, when applied to the goods of
`
`Applicant, to cause confusion, mistake or to deceive.
`
`
`
`12.
`
`Registration of the ‘637 App. by Applicant is barred by the provisions of
`
`15 U.S.C. § 1052(f), because when used, would cause dilution under § 43(c), thereby
`
`damaging Opposer as a result of dilution by blurring and would lessen the capacity of
`
`Opposer’s Mark to identify goods having their source in Opposer.
`
`13.
`
`For these reasons, Opposer would be damaged by the registration of
`
`the’637 App.
`
`
`
`4
`
`3699210.1 7001511-000
`
`
`
`WHEREFORE, Opposer respectfully requests that the ‘637 App. be rejected, that
`
`no registration be issued thereon to Applicant, and that this opposition be sustained in
`
`favor of Opposer.
`
`
`
`Pursuant to 37 C.F.R. § 2.101 Opposer has served a copy of the Notice of
`
`Opposition on the Attorney of record for Applicant identified on the USPTO’s TARR
`
`database by first class mail on January 19, 2009. A copy of the certificate of service is
`
`attached.
`
`
`
`The required fee of $300.00 is enclosed. Please charge additional costs to our
`
`Deposit Account No. 004-0100.
`
`Respectfully submitted,
`
`DARBY & DARBY P.C.
`
`Respectfully submitted,
`
`DARBY & DARBY P.C.
`
`By: __/Abigail Rubinstein / __
`Paul Fields
`Abigail Rubinstein
`P.O. Box 770
`Church Street Station
`New York, New York 10008-0770
`(212) 527-7700
`
`Attorneys for Opposer
`Swank, Inc.
`
`3699210.1 7001511-000
`
`
`
`
`
`
`
`
`
`5
`
`
`Dated: New York, New York
` January 19, 2009
`
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`CERTIFICATE OF SERVICE
`
`It is hereby certified that a true and complete copy of the foregoing NOTICE OF
`
`OPPOSITION was served by first class mail to the correspondent of record for Applicant
`
`addressed as follows:
`
`CAROLYN E. KNECHT
`MOTOROLA, INC.
`600 N US HIGHWAY 45
`LIBERTYVILLE, IL 60048-5343
`
`
`Dated: January 19, 2009
`
`
`/Abigail Rubinstein/
`Abigail Rubinstein
`
`6
`
`3699210.1 7001511-000
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