`ESTTA307467
`ESTTA Tracking number:
`09/22/2009
`
`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
`
`Annco, Inc.
`10/07/2009
`
`7 Times Square
`New York, NY 10036
`UNITED STATES
`
`Attorney
`information
`
`William M. Borchard
`Cowan, Liebowitz & Latman, P.C.
`1133 Avenue of the Americas
`New York, NY 10036
`UNITED STATES
`wmb@cll.com, rsm@cll.com, trademark@cll.com Phone:212-790-9200
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`International
`Registration No.
`Applicant
`
`79057849
`09/22/2009
`
`0974627
`
`Publication date
`Opposition
`Period Ends
`International
`Registration Date
`
`06/09/2009
`10/07/2009
`
`07/25/2008
`
`August Storck KG
`Waldstrasse 27
`13403 Berlin,
`GERMANY
`Goods/Services Affected by Opposition
`
`Class 030.
`All goods and services in the class are opposed, namely: Confectionery, namely, candy, chocolates,
`chocolate chips, fruit gums, chewing gums, lollipops; chocolate products, namely, chocolate powder
`and chocolate syrup; pastries, ice-cream; preparations for making the aforementioned products,
`namely, cocoa powder and sugar
`
`Grounds for Opposition
`
`Other
`
`See attached pleading.
`
`Attachments
`
`LOFT Notice of Opposition.pdf ( 12 pages )(418285 bytes )
`
`Certificate of Service
`
`
`
`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.
`
`Signature
`Name
`Date
`
`/Elise Kasell/
`Elise Kasell
`09/22/2009
`
`
`
`Ref. No. 24719-096
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In re Application Serial No. 79/057849
`Filed: July 25, 2008
`For Mark: LOFT
`
`Published in the Official Gazette: June 9, 2009
`_______________________________________________________X
`
`ANNCO, INC.
`
`Opposition No.
`
`v.
`
`Opposer,
`
`.
`:
`
`NOTICE OF OPPOSITION
`
`AUGUST STORCK KG
`
`Applicant
`.....................................................--X
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Trademark Trial and Appeal Board
`P.O. Box 1451
`
`Alexandria, VA 22313-1451
`
`Opposer, Annco, Inc., a Delaware corporation, located at 7 Times Square, New York,
`
`New York 10036, believes that it will be damaged by registration of the mark LOFT as shown in
`
`Application Serial No. 79/057849 (the “Application”), filed by Applicant August Storck KG
`
`(“Applicant”), and Annco, Inc., having been granted an extension of time to oppose up to and
`
`including October 9, 2009, hereby opposes same.
`
`As grounds for opposition, it is alleged that:
`
`OPPOSER’S BUSINESS AND RIGHTS
`
`1.
`
`Opposer, its affiliates and their predecessors (referred to collectively as
`
`“Opposer”) is a leading retailer of women’s apparel, accessories and other products in the United
`
`States. For almost 15 years, which is long prior to July 25, 2008, Applicant’s U.S. filing date,
`
`24719/000/l l30733.4
`
`
`
`Opposer has been in the business of designing, having manufactured, selling and distributing a
`
`wide array of goods sold in its retail stores and through its website using marks consisting of or
`
`containing the word LOFT, used either separately or in conjunction with other words, letters or
`
`design elements (the “LOFT Marks”).
`
`2.
`
`Since the launch of Opposer’s LOFT brand in 1995, when its first LOFT retail
`
`store opened, Opposer has extensively marketed and promoted a variety of goods bearing the
`
`LOFT Marks through its retail stores and website in the United States. As a result, the LOFT
`
`business has become a huge commercial success, with LOFT sales in the last three fiscal years
`
`totaling in excess of 3 billion United States Dollars. As of January 31, 2009, there were 510
`
`LOFT retail stores in the United States, the District of Columbia and Puerto Rico. The LOFT
`
`Marks have not only come to identify the stores and products of Opposer, but also have become a
`
`symbol of the distinction and quality associated with Opposer by consumers and the trade
`
`overall.
`
`3.
`
`As a result of the extensive sales and promotion of its goods and services bearing
`
`or offered in connection with Opposer’s LOFT Marks, Opposer has built up highly valuable
`
`goodwill in the LOFT Marks. The LOFT Marks have become famous and uniquely associated
`
`with Opposer’s retail stores and website and with Opposer’s women’s apparel, accessories and
`
`other goods sold in Opposer’s stores and through its website.
`
`4.
`
`Annco, Inc. is the owner of the following registrations and applications in the
`
`United States Patent and Trademark Office (“USPTO”) for the LOFT Marks:
`
`24719/000/l l30733.4
`
`
`
`
`
`
`
`3,359,615
`
`Reg. Date/
`Filin Date Goods/Services
`
`
`
`12/25/2007
`
`35: ON-LINE AND IN STORE
`RETAIL STORE SERVICES IN THE
`
`FIELDS OF CLOTHING,
`FOOTWEAR, HANDBAGS, SMALL
`LEATHER ACCESSORIES,
`
`JEWELRY, TOILETRIES,
`CONSUMABLE BATH PRODUCTS
`
`‘LAND COSMETIC PRODUCTS
`
`
`26: HAIR ACCESSORIES, NAMELY,
`
`
`
`(1
`_l_
`3,434,715
`
`3,488,664
`
`5/27/2008
`
`SCRUNCHIES, BARRETTES AND
`CLIPS; PONYTAIL HOLDERS
`
`8/19/2008
`25: CLOTHING, NAMELY,
`DRESSES, SKIRTS, SUITS, JEANS,
`SWEATERS, SHIRTS, T-SHIRTS,
`TANK TOPS, BODYSUITS,
`JUMPERS, VESTS, GLOVES, SLEEP
`WEAR, ROBES, SWIMSUITS,
`BLOUSES, PANTS, SHORTS,
`JACKETS, COATS, SOCKS,
`HOSIERY, BELTS, SCARVES,
`UNDERWEAR; HEADWEAR; AND
`FOOTWEAR
`
`
`
`
`
`
`
`
`
`
`
`5/12/2006
`3: SOAPS FOR PERSONAL USE
`36: CREDIT CARD SERVICES
`7/11/2008
`
`8/6/2008
`9: SUNGLASSES AND SUNGLASS
`CASES
`
`78/882,798
`77/520,371
`77/540/499
`
`
`
`{LOFT
`
`1T()FT
`
`LOFT
`LOFT
`LOFT
`
`14: JEWELRY
`
`18: HANDBAGS, POCKETBOOKS,
`SHOULDER BAGS, ROLL BAGS,
`EVENING HANDBAGS, COSMETIC
`
`CASES SOLD EMPTY, WALLETS,
`KEY CASES, CLUTCH PURSES,
`CLUTCH BAGS, GENERAL
`PURPOSE PURSES, DRAWSTRING
`
`POUCHES, TOTE BAGS,
`BACKPACKS, SLING BAGS,
`BRIEFCASE-TYPE PORTFOLIOS,
`
`SATCHELS, UMBRELLAS
`
`L
`
`_L
`
`/_ ‘
`
`24719/000/1 1307334
`
`3
`
`
`
`Reg. No./
`Ser. No.
`
`Reg. Date/
`Filin Date Goods/Services
`
`77/568,440
`
`9/12/2008
`
`
`
`
`3; PERFUME; COLOGNE; TOILET
`
`WATER; BATH OIL; BATH GEL;
`
`BATH SALT; BATH CREAM; SKIN
`
`LOTION; MAKEUP FOR LIPS, EYES
`
`AND CHEEKS; FACIAL CLEANSER;
`
`SKIN MOISTURIZER; PERSONAL
`SOAPS
`
`
`
`
`
`
`TANK TOPS, BODYSUITS,
`
`JUMPERS, VESTS AND
`SLEEPWEAR
`
`35: ON-LINE AND IN STORE
`
`
`
`
`
`
`
`RETAIL STORE SERVICES IN THE
`
`
`
`
`
`FIELDS OF CLOTHING,
`
`FOOTWEAR, HANDBAGS, SMALL
`
`LEATHER ACCESSORIES,
`
`JEWELRY, TOILETRIES, BATH
`PRODUCTS AND COSMETIC
`
`PRODUCTS
`
`
`
`
`
`25: CLOTHING, NAMELY,
`DRESSES, SKIRTS, SUITS, JEANS,
`
`SWEATERS, SHIRTS, T-SHIRTS,
`
`TANK TOPS, BODYSUITS,
`
`JUMPERS, VESTS, GLOVES,
`
`SLEEPWEAR, ROBES, SWIMSUITS,
`
`BLOUSES, SHOES, PANTS, SHORTS,
`
`JACKETS, COATS, SOCKS,
`
`
`
`
`
`HOSIERY, HATS, CAPS, BELTS
`AND SCARVES
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`DRESSES, SKIRTS, SUITS,
`
`
`
`BLOUSES, SWEATERS, SHIRTS, T-
`
`SHIRTS, TANK TOPS, JUMPERS,
`
`25:CLOTHING,NAMELY,
`
`VESTS, PANTS, JEANS, SHORTS,
`
`JACKETS, COATS, SLEEPWEAR,
`AND SWIMSUITS
`
`
`
`35: ON-LINE AND IN STORE
`
`
`
`Mark
`
`LOFT
`
`24719/000/1 13o733.4
`
`
`
`
`
`
`
`
`
`25: CLOTHING; NAMELY,
`
`DRESSES, SKIRTS, BLOUSES,
`
`SHOES, PANTS, SHORTS, JACKETS,
`
`
`
`COATS, SOCKS, JEANS,
`
`SWEATERS, SHIRTS, T-SHIRTS,
`
`LITTLE LOFT
`
`3,373,790
`
`1/22/2008
`
`LOFT FOR LIFE
`
`3,399,970
`
`3/18/2008
`
`LOFT FOR LIFE
`
`3,247,044
`
`5/29/2007
`
`
`
`
`
`
`Mark
`
`Reg. No./
`Ser. No.
`
`Reg. Date/
`Filin Date Goods/Services
`RETAIL STORE SERVICES IN THE
`
`
`FOOTWEAR, HANDBAGS, SMALL
`
`
`FIELDS OF CLOTHING,
`
`LEATHER ACCESSORIES,
`
`CROCHETED BAGS, MACRAME
`
`BAGS, HOBO BAGS, LINEN BAGS,
`BEADED BAGS
`
`JEWELRY, TOILETRIES,
`
`CONSUMABLE BATH PRODUCTS
`
`AND COSMETIC PRODUCTS
`
`
`LOFTBEACH
`3,268,087
`7/24/2007
`9: SUNGLASSES
` 18:HANDBAGS, STRAW BAGS,
`
`TOTE BAGS, SHOULDER BAGS,
`
` 25: CLOTHING, NAMELY
`
`DRESSES, SKIRTS, JACKETS,
`
`
`
`
`
`
`
`PANTS, JEANS, SHORTS, BLOUSES,
`
`SHIRTS, KNITTED TOPS, STRETCH
`
`TOPS, JERSEY TOPS, HOODED
`
`SWEATSHIRTS, CROCHETED TOPS,
`
`CAMISOLES, HALTER TOPS,
`
`SLEEVELESS TOPS, TUNICS,
`
`PULLOVERS, SWEATERS, T-
`
`SHIRTS, BIKINI TOPS, TANK TOPS,
`
`ZIPPERED TOPS, SWIMWEAR,
`
`BELTS, SASHES, SCARVES,
`FOOTWEAR
`
`
`
`SERVICES IN THE FIELD OF
`
`CLOTHING, FOOTWEAR,
`
`
`
`
`
`
`
`
`
`
`
`35: ENVIRONMENTALLY
`
`RESPONSIBLE RETAIL STORE
`
`
`HANDBAGS, SMALL LEATHER
`
`ACCESSORIES, JEWELRY,
`
`
`
`
`TOILETRIES, BATH PRODUCTS,
`AND COSMETIC PRODUCTS
`
` 36: CHARITABLE FUND RAISING
`SERVICES, NAMELY SHARING
`PROFITS FROM PRODUCT SALES
`
`
`
`
`
`
`
`
`
`LOFT CARES
`
`77/194,364
`
`5/31/2007
`
`24719/000/1 130733.4
`
`5
`
`
`
`WITH NOT-FOR-PROFIT
`
`ORGANIZATIONS, AND
`CHARITABLE FUND RAISING
`
`
`
`
`
`
`
`
`
`Mark
`
`Reg. No./
`Ser. No.
`
`
`
`Reg. Date/
`Filin Date
`
`LOFTONLINE
`
`77/3 74,435
`
`1/ 1 7/2008
`
`LOFT ONLINE
`
`77/374,444
`
`1/17/2008
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Goods/Services
`
`35: ON-LINE RETAIL STORE
`
`SERVICES IN THE FIELDS OF
`
`CLOTHING, FOOTWEAR,
`
`HANDBAGS, SMALL LEATHER
`
`ACCESSORIES, JEWELRY,
`
`TOILETRIES, CONSUMABLE BATH
`
`PRODUCTS, AND COSMETIC
`PRODUCTS
`
`35: ON-LINE RETAIL STORE
`
`SERVICES IN THE FIELDS OF
`
`
`
`
`
`
`
`CLOTHING, FOOTWEAR,
`
`HANDBAGS, SMALL LEATHER
`
`
`
`ACCESSORIES, JEWELRY,
`
`TOILETRIES, CONSUMABLE BATH
`
`PRODUCTS, AND COSMETIC
`
`PRODUCTS
`
`
`
`
`PROGRAM FOR ENABLING
`
`
`
`LOFT LOVES
`
`TEACHERS
`
`77/592,354
`
`10/14/2008
`
`35: ADMINISTRATION OF A
`
`PARTICIPANTS TO OBTAIN
`
`DISCOUNTS ON GOODS AND
`
`RECEIVE IMPROVED SERVICES
`
`77/566,310
`
`9/10/2008
`35: ON-LINE RETAIL STORE
`SERVICES IN THE FIELDS OF
`
`LIVE. LOVE.
`
`LOFT.
`
`
`
`CLOTHING, FOOTWEAR,
`
`HANDBAGS, SMALL LEATHER
`
`ACCESSORIES, JEWELRY,
`
`TOILETRIES, CONSUMABLE BATH
`
`PRODUCTS, AND COSMETIC
`PRODUCTS
`
`5/13/1997
`42: RETAIL CLOTHING STORE
`SERVICES
`
`
`
` ANN TAYI. OR.
`LOFT
`
`
`
`
`
`
`ANNTAYLOR
`3/28/2000
`25: CLOTHING, NAMELY
`DRESSES, SKIRTS, SUITS,
`LO F T
`
`BLOUSES, SHOES, PANTS, SHORTS,
`
`
`
`
`JACKETS, COATS, SOCKS,
`
`
`
`ANNTAYLOR
`LOFT
`
`2,704,411
`
`4/8/2003
`
`24719/000/1 l30733.4
`
`6
`
`HOSIERY, HATS, BELTS, SCARVES
`AND UNDERWEAR
`
`9: SUNGLASSES AND SUNGLASS
`CASES
`
`
`
`
`
`Mark
`
`ANN TAYLOR
`LOFT
`
`Reg. No./
`Ser. No.
`
`Reg. Date/
`Filin Date Goods/Services
`
`2,825,310
`
`3/23/2004
`
`14: JEWELRY
`
`ANNTAYLOR
`
`3,078,844
`
`4/11/2006
`
`18: HANDBAGS, POCKETBOOKS,
`
`SHOULDER BAGS, ROLL BAGS,
`
`EVENING HANDBAGS, COSMETIC
`
`CASES SOLD EMPTY, WALLETS,
`
`KEY CASES, CLUTCH PURSES,
`
`CLUTCH BAGS, GENERAL
`
`PURPOSE PURSES, DRAWSTRING
`
`POUCHES, TOTE BAGS,
`
`BACKPACKS, SLING BAGS,
`
`BRIEFCASE—TYPE PORTFOLIOS,
`
`SATCHELS, UMBRELLAS
`
`
`
`20: JEWELRY CASES NOT OF
`
`PRECIOUS METAL
`
`LOFT
`
`
`
`ANNTAYLOR
`LOFT
`
`3,202,185
`
`1/23/2007
`
`25: SWIMWEAR
`
`ANNTAYLOR
`LOFT
`
`3,327,631
`
`10/30/2007
`
`4: CANDLES
`
`ANNTAYLOR
`
`3,500,924
`
`9/16/2008
`
`26: HAIR ACCESSORIES, NAMELY,
`
`LOFT
`
`SCRUNCHIES, BARRETTES AND
`
`CLIPS; PONYTAIL HOLDERS
`
`ANNTAYLOR
`
`78/434,981
`
`6/18/2004
`
`3: PERFUME; COLOGNE; TOILET
`
`LOFT
`
`WATER; BATH OIL; BATH GEL;
`
`BATH SALT; BATH CREAM; SKIN
`
`LOTION; SKIN MOISTURIZER;
`PERSONAL SOAPS
`
`ANNTAYLOR
`
`3,455,810
`
`6/24/2008
`
`25: CLOTHING, NAMELY,
`
`LOFTMATERNITY
`
`DRESSES, SKIRTS, SUITS, JEANS,
`
`SWEATERS, SHIRTS, T-SHIRTS,
`
`TANK TOPS, JUMPERS, VESTS,
`
`SLEEPWEAR, ROBES, BLOUSES,
`
`PANTS, SHORTS, JACKETS, COATS
`
`Registration Nos. 2,061,836, 2,334,051 and 2,704,411 have become incontestable.
`
`24719/000/1 130733.4
`
`
`
`APPLICANT’S APPLICATION AND LACK OF RIGHTS
`
`5.
`
`On July 25, 2008, the Application filed by Applicant sought an extension of its
`
`International Registration No. 974,627 to the USPTO to register in the United States the mark
`
`LOFT for “confectionery, namely, candy, chocolates, chocolate chips, fruit gums, chewing gums,
`
`lollipops; chocolate products, namely, chocolate powder and chocolate syrup; pastries, ice-cream;
`
`preparations for making the aforementioned products, namely, cocoa powder and sugar.”
`
`6.
`
`Upon information and belief, Applicant did not use prior to July 25, 2008 the
`
`LOFT mark in U.S. commerce for some or all of the goods claimed in its Application.
`
`7.
`
`Upon information and belief, Applicant has never used to the date of this Notice
`
`of Opposition the LOFT mark in U.S. commerce for some or all of the goods claimed in its
`
`Application.
`
`8.
`
`Upon information and belief, Applicant has not taken any steps to the date of this
`
`Notice of Opposition to use or to license the use of the LOFT mark in U.S. commerce for some
`
`or all of the goods claimed in its Application.
`
`APPLICANT’S REPEATED AND CONTINUING HISTORY OF FAILING TO
`ESTABLISH RIGHTS
`
`9.
`
`Applicant has a history of first seeking or obtaining a registration of LOFT in the
`
`USPTO based on non-U.S. rights and then failing to file any evidence that it has used the LOFT
`
`mark in U.S. commerce.
`
`10.
`
`Upon information and belief, on November 29, 1990, Applicant previously filed
`
`in the USPTO an application, Serial No 74/119484, to register LOFT for “confectionery,
`
`24719/000/l l30733.4
`
`
`
`chewing gum for nomnedical purposes, chocolate, chocolate products, including pralines;
`
`pastries” in Class 30 based on a German application, and on April 2, 1992, Applicant abandoned
`
`that application in the USPTO by failing to respond to an office action.
`
`11.
`
`Upon information and belief, Applicant had a previous registration in the USPTO,
`
`Registration No. 1972196 issued May 7, 1996, of LOFT for “candy” in Class 30 based on a
`
`German registration, and that registration in the USPTO was cancelled on Februaiy 8, 2003 for
`
`failure to file a statement of use.
`
`12.
`
`Upon information and belief, Applicant has a current registration in the USPTO,
`
`Registration No. 2,731,327 issued July 1, 2003, of LOFT for “candy, chocolate, chocolate
`
`candies and pastries” in Class 30 based on a German registration, and Applicant failed to file a
`
`statement of use prior to July 1, 2009, the deadline for doing so.
`
`APPLICANT’S FALSE STATEMENTS
`
`13.
`
`Upon information and belief, at the time Applicant requested that its International
`
`Application be extended to the United States resulting in the Application here in issue, Applicant
`
`made a statement to the effect that Applicant had a bona fide intention to use the mark on all of
`
`the goods claimed in its Application.
`
`14.
`
`Upon information and belief, at the time Applicant requested that its International
`
`Application be extended to the United States resulting in the Application here in issue, Applicant
`
`did not have a bona fide intention to use the LOFT mark in U.S. commerce for some or all of the
`
`goods claimed in its Application.
`
`24719/000/l l30733.4
`
`
`
`15.
`
`Upon information and belief, in requesting that its International Application be
`
`extended to the United States resulting in the Application here in issue, Applicant made one or
`
`more false statements about Applicant’s intention to use the trademark LOFT in U.S. commerce
`
`for some or all of the goods claimed in its Application.
`
`16.
`
`Upon information and belief, in requesting that its International Application be
`
`extended to the United States resulting in the Application here in issue, Applicant committed
`
`fraud on the USPTO by making one or more false statements about Applicant’s intention to use
`
`the trademark LOFT in U.S. commerce for some or all of the goods claimed in its Application,
`
`and these were knowingly false statements of material fact with the intent to deceive the USPTO,
`
`and/or were made in reckless disregard of the truth or falsity of those statements, and/or were
`
`made after grossly insufficient investigation of the facts.
`
`OPPOSER’S INJURY
`
`17.
`
`The tremendous amount of time, effort and money expended by Opposer to build
`
`up the LOFT brand name over the past years, and the phenomenal growth of that business, has
`
`caused the LOFT Marks to become famous and distinctive of Opposer’s business. Opposer
`
`would be injured by the granting of such registration because App1icant’s LOFT mark is likely to
`
`cause dilution by blurring or tamishment of the distinctive significance and quality of the LOFT
`
`Marks that uniquely identify Opposer’s products and services in the United States.
`
`18.
`
`Applicant’s LOFT mark also is likely, when applied to the goods identified in the
`
`Application, to cause confilsion, or to cause mistake or to deceive in that prospective consumers
`
`of Applicant’s goods and services naturally will believe that the goods originated, were approved
`
`247l9/000/1 l30733.4
`
`10
`
`
`
`or were sponsored by Opposer. Opposer would thereby be injured by the granting to Applicant
`
`of the registrations sought.
`
`19.
`
`Opposer would be further injured by the granting of a certificate of registration to
`
`Applicant because Applicant’s LOFT mark would falsely suggest an affiliation, connection or
`
`association of Applicant with Opposer.
`
`WHEREFORE, Opposer, by its attorneys, respectfully requests that their opposition be
`
`sustained and that the Application be denied.
`
`Dated: New York, New York
`September &, 2009
`
`Respectfillly submitted,
`
`COWAN, LIEBOWITZ & LATMAN, P.C.
`
`orO poser
`
`Attorne
`
`B
`
`Richard S. Mandel
`
`William M. Borchard
`
`1133 Avenue of the Americas
`
`New York, New York 10036
`
`(212) 790-9200
`
`24719/000/1l30733.4
`
`11
`
`
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`CERTIFICATE OF SERVICE
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`I hereby certify that a true and correct copy of this Notice of Opposition was served upon
`
`the correspondent for the opposed application by mailing a copy thereof by air mail, postage
`
`prepaid, addressed as follows:
`
`CMS Hasche Sigle
`Stadthausbrucke 1-3
`
`20355 Hamburg
`
`Fed Rep Germany
`
`RICHARD S. MANDEL
`
`24719/000/l l30733.4