Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA545390
`ESTTA Tracking number:
`06/26/2013
`
`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
`
`Just Fabulous, Inc.
`06/26/2013
`
`2301 Rosecrans Avenue, Suite 4100
`El Segundo, CA 90245
`UNITED STATES
`
`Attorney
`information
`
`Alexa L. Lewis
`Mitchell Silberberg & Knupp LLP
`11377 W. Olympic Boulevard
`Los Angeles, CA 90064
`UNITED STATES
`all@msk.com, kls@msk.com, gxb@msk.com, Phone:(310) 312-2000
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`85230638
`06/26/2013
`
`Publication date
`Opposition
`Period Ends
`
`02/26/2013
`06/26/2013
`
`Fab.com, Inc.
`101 W. 24th St. #34B
`New York, NY 10011
`UNITED STATES
`Goods/Services Affected by Opposition
`
`Class 035.
`All goods and services in the class are opposed, namely: Promoting the goods and services of
`others, namely, providing online information regarding discounts, coupons, rebates, vouchers and
`special offers for the goods and services of others
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act section 2(d)
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`
`4183738
`
`07/31/2012
`
`JUST FAB
`
`Application Date
`
`05/14/2010
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Description of
`Mark
`Goods/Services
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 035. First use: First Use: 2010/07/00 First Use In Commerce: 2010/07/00
`Online retail store services featuring shoes, footwear, bags, handbags, luggage,
`clothing and sunglasses; retail store services featuring shoes, footwear, bags,
`handbags, luggage, clothing and sunglasses
`Class 045. First use: First Use: 2010/07/00 First Use In Commerce: 2010/07/00
`Fashion trend consulting services; personal fashion consulting services;
`providing information about fashion trends; provision of a website featuring
`information on fashion; providing online fashion questions to help users
`determine the style of clothing best suited to their individual needs and
`preferences; personal shopping for others
`
`4292790
`
`02/19/2013
`
`JUST FAB
`
`NONE
`
`Application Date
`
`11/12/2010
`
`Foreign Priority
`Date
`
`NONE
`
`Class 025. First use: First Use: 2012/05/00 First Use In Commerce: 2012/05/00
`Women's shoes, sandals, shoes and footwear; Clothing, namely, bandanas,
`beanies, belts, blazers, blouses, boots, caps, coats, dresses, gloves, hats,
`headwear, jackets, jeans, jogging outfits, neckties, overalls, pajamas, pants,
`parkas, ponchos, pullovers, rainwear, robes, sandals, sarongs, scarves, shirts,
`shorts, skirts, slacks, socks, sun visors, suspenders, sweat bands, sweat pants,
`sweat shirts, sweaters, tank tops, turtlenecks, vests, wristbands
`
`4293503
`
`02/19/2013
`
`JUST FAB
`
`NONE
`
`Application Date
`
`11/12/2010
`
`Foreign Priority
`Date
`
`NONE
`
`Class 018. First use: First Use: 2012/05/00 First Use In Commerce: 2012/05/00
`Purses, handbags, luggage; travel back packs, backpacks, daypacks, fanny
`packs, waist packs, garment bags for travel, duffle bags, all purpose athletic
`bags, travel bags, shoulder bags, briefcases, attache cases
`
`Attachments
`
`85-230,638 - Just Fabulous, Inc. Notice of Opposition (5401197).PDF(97908
`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
`
`/s/ Alexa L. Lewis
`Alexa L. Lewis
`06/26/2013
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the matter of Application Serial No. 85/230,638
`Published for Opposition in the OFFICIAL GAZETTE
`on February 26, 2013
`
`JUST FABULOUS, INC. (cid:9)
`
`Opposer, (cid:9)
`
`V.
`
`FAB.COM, INC.,
`
`Applicant.
`
`Opposition No.:
`
`Mark: FAB DEALS
`
`NOTICE OF OPPOSITION
`
`Just Fabulous, Inc. ("Just Fabulous" or "Opposer"), a Delaware corporation having its
`
`principal place of business at 2301 Rosecrans Avenue, Suite 4100, El Segundo, CA 90245,
`
`believes it would be damaged by the registration of the mark shown in Application Serial No.
`
`85/230,638 filed by Fab.com , Inc. ("Applicant") and hereby opposes same.
`
`As grounds for this opposition it is alleged:
`
`1. Just Fabulous is the owner of a family of JUST FAB marks that identify and
`
`distinguish in commerce its goods and services. The JUST FAB trademark undeniably has
`
`become an immediately recognizable mark.
`
`2. (cid:9)
`
`In addition to its common law use of its JUST FAB family of marks, Just
`
`Fabulous is the owner of numerous trademark registrations in the U.S. Patent and Trademark
`
`5395420.1
`
`

`
`Office ("PTO") for the mark JUST FAB, including: (1) Reg. No. 4,183,738, for "Online retail
`
`store services featuring shoes, footwear, bags, handbags, luggage, clothing and sunglasses; retail
`
`store services featuring shoes, footwear, bags, handbags, luggage, clothing and sunglasses" and
`
`"Fashion trend consulting services; personal fashion consulting services; providing information
`
`about fashion trends; provision of a website featuring information on fashion; providing online
`
`fashion questions to help users determine the style of clothing best suited to their individual
`
`needs and preferences; personal shopping for others;" (2) Reg. No. 4,292,790, for "Women's
`
`shoes, sandals, shoes and footwear; Clothing, namely, bandanas, beanies, belts, blazers, blouses,
`
`boots, caps, coats, dresses, gloves, hats, headwear, jackets, jeans, jogging outfits, neckties,
`
`overalls, pajamas, pants, parkas, ponchos, pullovers, rainwear, robes, sandals, sarongs, scarves,
`
`shirts, shorts, skirts, slacks, socks, sun visors, suspenders, sweat bands, sweat pants, sweat shirts,
`
`sweaters, tank tops, turtlenecks, vests, wristbands;" and (3) Reg. No. 4,293,503, for "Purses,
`
`handbags, luggage; travel back packs, backpacks, daypacks, fanny packs, waist packs, garment
`
`bags for travel, duffle bags, all purpose athletic bags, travel bags, shoulder bags, briefcases,
`
`attache cases." As proof of status and title, attached as Exhibit A hereto and incorporated by
`
`reference herein are true and correct copies of these Registrations. (The marks identified above
`
`hereinafter are designated as the "Marks" for purposes of this pleading.)
`
`3. (cid:9)
`
`Just Fabulous has expended considerable funds and made significant efforts in
`
`promoting and advertising Just Fabulous' goods and services identified by the Marks. These
`
`goods and services have enjoyed enormous commercial success and have been the subject of
`
`substantial media attention. As a result, Just Fabulous has established an enviable reputation,
`
`acquired substantial goodwill, and attained distinctiveness in each of the Marks throughout the
`
`entire United States.
`
`5395420.1 (cid:9)
`
`2
`
`

`
`4.
`
`Just Fabulous' rights in the Marks notwithstanding, on or about January 31, 2012,
`
`Applicant filed an intent-to-use application (the "Application") with the United States Patent and
`
`Trademark Office ("USPTO") to register FAB DEALS for the following services in International
`
`Class 35: "Promoting the goods and services of others, namely, providing online information
`
`regarding discounts, coupons, rebates, vouchers and special offers for the goods and services of
`
`others."
`
`5.
`
`Just Fabulous' rights for the Marks are prior to any rights of Applicant to the
`
`Opposed Mark.
`
`6.
`
`In view of the similarities between, on the one hand, each of the Marks, and, on
`
`the other hand, the Opposed Mark that is the subject of the Application, and the relationship
`
`between Just Fabulous' goods and services as identified by the Marks and the services identified
`
`in the Application, it is likely that members of the public will erroneously believe that
`
`Applicant's services originate with, or are in some manner connected or associated with, or
`
`sponsored by, Just Fabulous, all to the harm of Just Fabulous' goodwill and reputation.
`
`7.
`
`Applicant's Opposed Mark so resembles each of the Marks when used on or in
`
`connection with Applicant's services as to be likely to cause confusion, mistake or to deceive,
`
`and is therefore precluded from registration under Section 2(d) of the Lanham Act, 15 U.S.C. §
`
`1052(d).
`
`8.
`
`If Applicant is granted registration of the Opposed Mark, it would obtain a prima
`
`facie exclusive right to use of its mark that would cause damage and injury to Just Fabulous.
`
`5395420.1 (cid:9)
`
`3
`
`

`
`WHEREFORE registration by Applicant of the aforesaid trademark for the aforesaid
`
`services will be damaging to Just Fabulous, and Just Fabulous, therefore, requests that the
`
`Opposition be sustained and application Serial No. 85/230,638 be denied registration. Just
`
`Fabulous submits herewith the requisite filing fee; please charge any additional fees or credit
`
`overpayment to Deposit Account No. 13-3735.
`
`Dated: June 26, 2013 (cid:9)
`
`Respectfully submitted,
`
`Alexa L. Lewis, Esq.
`Mitchell, Silberberg & Knupp, LLP
`11377 W. Olympic Boulevard
`Los Angeles, CA 90064
`310-312-3200
`Attorneys for Opposer
`
`5395420.1 (cid:9)
`
`4
`
`

`
`CERTIFICATE OF ELECTRONIC TRANSMISSION
`
`I hereby certify that this correspondence is being transmitted electronically through
`ESTTA pursuant to 37 C.F.R. § 2.195(a) on June 26, 2013.
`
`K. berly Stewart
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on June 26, 2013, a true and correct copy of the foregoing NOTICE
`OF OPPOSITION was served upon Applicant by U.S. Mail to the following address:
`
`Holly Pranger
`Pranger Law Group
`3223 Webster Street
`San Francisco, CA 94123-2812
`
`Kimberly Stew
`
`5395420.1 (cid:9)
`
`5
`
`

`
`EXHIBIT A
`EXHIBIT A
`
`EXHIBIT A
`EXHIBIT A
`
`

`
`es,
`.....%
`
`tate0 of
`
`aittiteb ifotate% patent anti Tratiettrarii Mite
`
` erits,„
`
`JUST FAB
`
`Reg. No. 4,183,738
`JUST FABULOUS, INC. (DELAWARE CORPORATION)
`2301 ROSECRANS AVENUE, SUITE 4100
`Registered July 31, 2012 EL SEGUNDO, CA 90245
`Int. Cis.: 35 and 45
`
`SERVICE MARK
`
`FOR: ONLINE RETAIL STORE SERVICES FEATURING SHOES, FOOTWEAR, BAGS,
`HANDBAGS, LUGGAGE, CLOTHING AND SUNGLASSES; RETAIL STORE SERVICES
`FEATURING SHOES, FOOTWEAR, BAGS, HANDBAGS, LUGGAGE, CLOTHING AND
`SUNGLASSES, IN CLASS 35 (U.S. CLS. 100, 101 AND 102).
`
`PRINCIPAL REGISTER
`
`FIRST USE 7-0-2010; IN COMMERCE 7-0-2010.
`
`FOR: FASHION TREND CONSULTING SERVICES; PERSONAL FASHION CONSULTING
`SERVICES; PROVIDING INFORMATION ABOUT FASHION TRENDS; PROVISION OF A
`WEBSITE FEATURING INFORMATION ON FASHION; PROVIDING ONLINE FASHION
`QUESTIONS TO HELP USERS DETERMINE THE STYLE OF CLOTHING BEST SUITED TO
`THEIR INDIVIDUAL NEEDS AND PREFERENCES; PERSONAL SHOPPING FOR OTHERS
`, IN CLASS 45 (U.S. CLS. 100 AND 101).
`
`FIRST USE 7-0-2010; IN COMMERCE 7-0-2010.
`
`THE MARK CONSISTS OF STANDARD CHARACTERS WITHOUT CLAIM TO ANY PAR-
`TICULAR FONT, STYLE, SIZE, OR COLOR.
`
`SN 85-039,190, FILED 5-14-2010.
`
`MARIA-VICTORIA SUAREZ, EXAMINING ATTORNEY
`
`pc0:017.K._
`
`Director of the United Stutes Patent Linil Trudetnork Office
`
`

`
`tate4 of attiertia
`
`Einiteb Otat eo Patent anti Trabetnark 'Dike
`
`JUST FAB
`
`Reg. No. 4,292,790
`Registered Feb. 19, 2013
`Int. CI.: 25
`
`TRADEMARK
`
`PRINCIPAL REGISTER
`
`JUST FABULOUS, INC. (DELAWARE CORPORATION)
`SUITE 4100
`2301 ROSECRANS AVENUE
`EL SEGUNDO, CA 90245
`
`FOR: WOMEN'S SHOES, SANDALS, SHOES AND FOOTWEAR; CLOTHING, NAMELY,
`BANDANAS, BEANIES, BELTS, BLAZERS, BLOUSES, BOOTS, CAPS, COATS, DRESSES,
`GLOVES, HATS, HEADWEAR, JACKETS, JEANS, JOGGING OUTFITS, NECKTIES,
`OVERALLS, PAJAMAS, PANTS, PARKAS, PONCHOS, PULLOVERS, RAINWEAR, ROBES,
`SANDALS, SARONGS, SCARVES, SHIRTS, SHORTS, SKIRTS, SLACKS, SOCKS, SUN VI-
`SORS, SUSPENDERS, SWEAT BANDS, SWEAT PANTS, SWEAT SHIRTS, SWEATERS,
`TANK TOPS, TURTLENECKS, VESTS, WRISTBANDS, IN CLASS 25 (U.S. CLS. 22 AND 39).
`
`FIRST USE 5-0-2012; IN COMMERCE 5-0-2012.
`
`THE MARK CONSISTS OF STANDARD CHARACTERS WITHOUT CLAIM TO ANY PAR-
`TICULAR FONT, STYLE, SIZE, OR COLOR.
`
`SN 85-176,016, FILED 11-12-2010.
`
`STEVEN JACKSON, EXAMINING ATTORNEY
`
`CtredererUw thited VA., Palm, xndhademak Ortice
`
`

`
`lottt tatel of attrertia
`
`zanittb ifotattO Veitent dub Teed:remark iUtite
`
`JUST FAB
`
`Reg. No. 4,293,503
`Registered Feb. 19, 2013
`Int. Cl.: 18
`
`TRADEMARK
`
`PRINCIPAL REGISTER
`
`JUST FABULOUS, INC. (DELAWARE CORPORATION)
`SUITE 4100
`2301 ROSECRANS AVENUE
`EL SEGUNDO, CA 90245
`
`FOR: PURSES, HANDBAGS, LUGGAGE; TRAVEL BACK PACKS, BACKPACKS, DAYPACKS,
`FANNY PACKS, WAIST PACKS, GARMENT BAGS FOR TRAVEL, DUFFLE BAGS, ALL
`PURPOSE ATHLETIC BAGS, TRAVEL BAGS, SHOULDER BAGS, BRIEFCASES, ATTACHE
`CASES, IN CLASS 18 (U.S. CLS. 1, 2,3, 22 AND 41).
`
`FIRST USE 5-0-2012; IN COMMERCE 5-0-2012.
`
`THE MARK CONSISTS OF STANDARD CHARACTERS WITHOUT CLAIM TO ANY PAR-
`TICULAR FONT, STYLE, SIZE, OR COLOR.
`
`SN 85-976,525, FILED 11-12-2010.
`
`STEVEN JACKSON, EXAMINING ATTORNEY
`
`Acting Dire nor Win Unli ad Stain Calant aMTnoalema tic °Me