Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA283505
`ESTTA Tracking number:
`05/12/2009
`
`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
`Entity
`Address
`
`Stussy, Inc.
`Corporation
`17426 Daimler Street
`Irvine, CA 92614
`UNITED STATES
`
`Citizenship
`
`California
`
`Attorney
`information
`
`John R. Sommer
`John R. Sommer, Attorney-at-Law
`17426 Daimler Street
`Irvine, CA 92614
`UNITED STATES
`sommer@stussy.com Phone:949 752 5344
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`77626926
`05/12/2009
`
`Publication date
`Opposition
`Period Ends
`
`04/14/2009
`05/14/2009
`
`Shugart, John
`6916 Oaklawn Drive
`Sachse, TX 75048
`UNITED STATES
`Goods/Services Affected by Opposition
`
`Class 025.
`All goods and services in the class are opposed, namely: Athletic apparel, namely, shirts, pants,
`jackets, footwear, hats and caps, athletic uniforms
`
`Grounds for Opposition
`
`Deceptiveness
`False suggestion of a connection
`Priority and likelihood of confusion
`Dilution
`Torres v. Cantine Torresella S.r.l.Fraud
`
`Trademark Act section 2(a)
`Trademark Act section 2(a)
`Trademark Act section 2(d)
`Trademark Act section 43(c)
`808 F.2d 46, 1 USPQ2d 1483 (Fed. Cir. 1986)
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`Registration Date
`
`2343524
`
`04/18/2000
`
`Application Date
`
`06/16/1999
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Word Mark
`Design Mark
`
`SS
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 018. First use: First Use: 1992/09/01 First Use In Commerce: 1992/09/01
`Articles made from leather and imitations of leather, namely, attaches,
`backpacks, beach bags, book bags, briefcases, carry-on bags, coin purses,
`cosmetic bags sold empty, daypacks, duffel bags, fanny packs, garment bags
`for travel, gym bags, handbags, leather key cases, luggage, purses, shopping
`bags, all purpose sports bags, suitcases, travel bags, waist packs, wallets,
`umbrellas
`
`U.S. Registration
`No.
`Registration Date
`
`2225736
`
`02/23/1999
`
`Word Mark
`Design Mark
`
`SS
`
`Application Date
`
`01/06/1998
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 025. First use: First Use: 1992/01/00 First Use In Commerce: 1992/01/00
`clothing, namely, coats, dresses, jackets, jerseys, pants, shirts, shorts, skirts,
`sweatshirts, sweatpants, swimsuits, t-shirts, tank tops, caps and hats
`
`U.S. Registration
`No.
`Registration Date
`
`2450864
`
`05/15/2001
`
`Word Mark
`
`SSO
`
`Application Date
`
`03/02/2000
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`The mark consists, in part, of a stylized drawing of the letters "S" and "S" in a
`circle.
`Class 026. First use: First Use: 1989/00/00 First Use In Commerce: 1989/00/00
`belt buckles not made of precious metal for clothing, buttons for clothing,
`embroidered emblems, fabric appliques, ornamental novelty buttons, novelty
`pins, ornamental ribbons made of textile, metal clothes buttons, plastic clothes
`buttons
`
`U.S. Registration
`No.
`Registration Date
`
`2883904
`
`09/14/2004
`
`Word Mark
`Design Mark
`
`SS
`
`Application Date
`
`08/25/2003
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 028. First use: First Use: 1999/07/28 First Use In Commerce: 1999/07/28
`Action figures and accessories therefore, bendable toys, collectable toy figures,
`dolls, fantasy character toys, playing cards, three dimensional puzzles,
`skateboards, soccer balls, toy gliders, yo-yos
`
`U.S. Registration
`No.
`Registration Date
`
`3618692
`
`05/12/2009
`
`Word Mark
`
`SS
`
`Application Date
`
`08/06/2008
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 2008/02/28 First Use In Commerce: 2008/02/28
`Cell phone cases; compact disk storage wallets; computer bags; computer
`carrying cases; directional compasses; magnets; personal data assistant cases;
`portable music player cases; sunglasses; cases for sunglasses and eyeglasses;
`prerecorded video discs featuring fashion, music, athletic performances and
`travel; cell phone pouches; personal data assistant (PDAs) pouches; personal
`music player pouches
`Class 018. First use: First Use: 2006/02/28 First Use In Commerce: 2006/02/28
`All purpose shopping bags made of textile; attaché cases; backpacks; beach
`bags; book bags; briefcases; briefcase type portfolios; business card cases;
`business cases; carrying cases; credit card cases; clutch bags; draw string
`pouches; duffel bags; fanny packs; garment bags for travel; hand bags; leather
`and imitation leather bags; leather key cases; leather key chains; leather key
`holders; luggage; messenger bags; purses; rucksacks; shoulder bags; sports
`bags; suit cases; tote bags; traveling bags; vanity cases sold empty; waist
`packs; wallets; umbrellas
`Class 025. First use: First Use: 1998/12/31 First Use In Commerce: 1998/12/31
`Clothing, namely, bathing suits; beach cover ups; belts; board shorts; coats;
`dresses; jackets; jerseys; pajamas; pants; polo shirts; rainwear; scarves; shirts;
`shorts; skirts; socks; suits; sweat pants; sweat shirts; sweaters; sweatbands;
`swim suits; t-shirts; tank tops; vests; underwear; wind-resistant jackets;
`wristbands; footwear; headgear, namely, berets, caps, hats, scarves
`
`Attachments
`
`75729086#TMSN.gif ( 1 page )( bytes )
`75414165#TMSN.gif ( 1 page )( bytes )
`75932965#TMSN.gif ( 1 page )( bytes )
`76541618#TMSN.gif ( 1 page )( bytes )
`77539979#TMSN.jpeg ( 1 page )( bytes )
`Opposition.pdf ( 4 pages )(167491 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
`
`/John R. Sommer/
`John R. Sommer
`05/12/2009
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL
`APPEAL BOARD
`
`In the matter of Application Serial No. 77/626926
`Published for Opposition in the OFFICIAL GAZETTE of April 14, 2009
`
`STUSSY, INC.,
`Opposer,
`
`V.
`
`JOHN SHUGART,
`Applicant.
`
`:
`:
`
`Opposition No.:
`
`NOTICE OF OPPOSITION
`
`Stussy, Inc. (“Opposer”), a California corporation having its principal place of business at
`
`17426 Daimler Street, Irvine, California 92614, believes it will be damaged by registration of the
`device
`SS shown in Serial No. 77/926926 in International Class 25, filed by John Shugart
`
`(“Applica_nt”), and hereby opposes the same.
`
`As grounds for this Opposition, it is alleged:
`
`1.
`
`On or about December 4, 2008, Applicant filed an intent to use application with
`
`the United States Patent and Trademark Office to register the SS device mark (consisting oftvvo
`
`touching letters “S”s)(hereinafter “Applicanfs Mark”) for “Athletic apparel, namely, shirts,
`
`pants, jackets, footwear, hats and caps, athletic uniforms” in International Class 25.
`
`2.
`
`Since at least as early as October 18, 1989, Opposer has been using the SS Link
`
`Mark (consisting of two interlocking letter “S”s, sornetirnes in a circle and sometimes not)
`
`(hereinafter “SS Link Mark”) on a variety of goods and services as listed on the registrations
`
`listed below, among others goods and services:
`
`

`
`SS in Circle
`
`Class
`
`Reg. No.
`
`Reg. Date
`
`Goods gpartial list)
`
`18
`25
`26
`28
`
`2,343,524
`2,225,736
`2,450,864
`2,883,904
`
`04/18/00
`02/23/99
`05/ 15/01
`09/ 14/04
`
`Bags, luggage, etc.
`Clothing, headwear
`Belt buckles
`Toys and sporting goods
`
`SS Without Circle
`
`Class
`
`Reg. No.
`
`Reg. Date
`
`Goods {partial list]
`
`09,l8,25 3,618,692
`
`05/12/09
`
`Sunglasses, bags, clothing
`
`3.
`
`Specifically, Opposer is the owner of U.S. Registrations listed above. The ‘524,
`
`"736, and ‘864 Registrations are incontestable within the meaning of Section 15.
`
`4.
`There is no issue as to priority. Applicant’s priority date for his ir1tent—toeu_se
`application is the filing date, December 4, 2008. Opposer’s priority dates for the registrations
`
`are: -Class 18: first use: September 1, 1992 and filed June 16, 1999; Class 25: first use January
`
`1, 1992 and filed January 6, 1998. For the ‘692 Registration as to Class 25, the priority date is
`
`fi1‘S'E..u_S,62 as early as 1998 and filed August 4, 2008. Since long prior to App1icant’s.f1ling of the
`
`application for App1icant’s Mark (no use of Applicant’s Mark having been alleged by
`Applicant), Opposer has made substantial and continuous use of the SS Link Mark in interstate,
`foreign, and intrastate commerce on and in connection with the advertising, promotion, and sale
`of its goods, since as early as 1992.
`
`5.
`
`By virtue of the aforesaid advertising, promotion, and sales, and by Virtue of the
`
`excellence of its products, Opposer’s SS Link Mark has come to represent exceedingly valuable
`
`goodwill owned by Opposer.
`
`

`
`6.
`
`The goods on which Opposer uses its SS Link Mark and the goods for which
`
`Applicant seeks to register Applicant’s Mark are closely related, if not identical, and are sold
`
`through the same channels of trade and to the same class of purchasers.
`
`'7.
`
`Opposer’s SS Link Mark and Applicant’s Mark are confusingly and substantially
`
`similar.
`
`8.
`
`Use by Applicant of Applicant’s Mark will be likely to cause confusion, mistake,
`
`or deception with Opposer’s SS Link Mark, and result in the belief that Applicant or Applicant’s
`
`goods are in some Way legitimately connected with, sponsored by, or approved by Opposer,
`
`resulting in damage and injury to Opposer. Persons familiar with Opposer’s SS Link Mark
`
`would be likely to buy Applic_ant’s goods as and for a product made and sold by Opposer. Any
`such confusion in trade inevitably would result in loss of sales to Opposer. Furthermore, any
`
`defect, obj ection, or fault found with Applicant’_s products marketed under Applicant’s Mark
`
`would necessarily reflect upon and seriously injure the reputation that Opposer has established
`
`for its products merchandised under Opposer’s SS Link Mark.
`
`9.
`
`Applicant’s Mark, if registered, will be deceptive, in violation of Section 2(a).
`
`10.
`
`Applicant’s Mark, if registered, will disparage or falsely suggest a connection
`
`between Applicant and Opposer and their respective goods, in violation of Section 2(a).
`
`1 1.
`
`Applicant’s Mark, if registered, will so resemble Opposer’s Marks registered on
`
`the Principal Register of the U.S. Patent & Trademark Office, and Opposer’s Marks in used in
`
`the United States and not abandoned, as to be likely, when used on or in connection with the
`
`goods of the Applicant, as to cause confusion, mistake or to deceive, in violation of Section 2(d).
`
`

`
`l2.
`
`Applicant’s Mark, if registered, will dilute the distinctiveness of Opposer’s Mark
`
`in Violation of Section 43(0).
`
`1.3.
`
`Any use Applicant has made or may make of App1icant’s Mark, is and will be
`
`without Opposer’s consent or permission.
`
`13.
`
`Applicant has no goodfaith intention to make trademark use of .App1icant’s
`
`on each and every one of the goods listed in the notice of publication for Applicanfs Mark. This
`
`constitutes inequitable conduct or fraud upon the Patent & Trademark Office.
`
`WHEREFORE, registration by Applicant of the aforesaid App1icant_’_s Mark for the
`
`aforesaid goods will be damaging to Opposer, and Opposer therefore requests that the
`
`Opposition be sustained.
`
`
`
` i
`
`R. Somrner
`
`17426 Daimler Street
`Irvine, California 92614
`(949)752-5344
`Fax: (949) 7525439
`SOMMER@STUSSY.COM
`
`Attorneys for Petitioner
`Stussy, lnc.