Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA681395
`ESTTA Tracking number:
`07/01/2015
`
`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 ex-
`tension
`Address
`
`Tricot Saint-James
`07/01/2015
`
`Zone Industrielle
`Saint-James, 50240
`FRANCE
`
`Attorney informa-
`tion
`
`Justin R. Young
`DINEFF TRADEMARK LAW LIMITED
`160 North Wacker Drive
`Chicago, IL 60606
`UNITED STATES
`jyoung@dineff.com,tmlaw@dineff.com Phone:3123381000
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`86217517
`07/01/2015
`
`Publication date
`Opposition Peri-
`od Ends
`
`03/03/2015
`07/01/2015
`
`Postrel, Richard D
`5244 North Bay Road
`Miami Beach, FL 33140
`UNITED STATES
`Goods/Services Affected by Opposition
`
`Class 003. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Promotional and novelty items, namely, reli-
`gious-themed perfumes and perfume sprays
`
`Grounds for Opposition
`
`False suggestion of a connection
`Priority and likelihood of confusion
`
`Trademark Act section 2(a)
`Trademark Act section 2(d)
`
`Mark Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`Registration Date
`
`4741231
`
`05/26/2015
`
`Word Mark
`
`SAINT JAMES
`
`Application Date
`
`05/02/2013
`
`Foreign Priority
`Date
`
`04/24/2013
`
`

`
`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 003. First use: First Use: 0 First Use In Commerce: 0
`Perfumes, perfumery, eau de parfum, essential oils for personal use, eaux de
`toilette, deodorants for personal use, scented soaps, hair lotions, scented
`creamsand gels for face and body care, make-up, cosmetics, cosmetic lotions
`for the hair and body, bath and shower gels, shampoos, beauty creams for body
`care
`Class 018. First use: First Use: 0 First Use In Commerce: 0
`Leather goods, namely, wallets, tanned leather, briefcase, key cases, hand-
`bags,luggage, walking sticks, sunshade parasols, umbrellas, parasols, leather
`and mutations of leather, school bags, rucksacks, trunks and suitcases, leather
`satchel bags, travel bags and luggage, beach bags, garment carriers leather
`and imitation leather boxes, attached cases, make-up cases sold empty, travel
`sets, namely, leather ware, namely, shoes bags and travel cases made of leath-
`er, briefcases,leather key cases, toiletry and make-upbags, sold empty, wallets,
`purses not of precious metal, document holders, cardcases, namely, credit card
`cases, calling card cases, business card cases
`Class 024. First use: First Use: 0 First Use In Commerce: 0
`Fabrics and textile products, namely, cotton fabric, curtains made of tex-
`tiles,woolen fabric, coated fabrics coated with thermoplastic coating for use in
`manufacturing in a wide variety of industries, fabrics for the manufacture of fur-
`nishings, fabrics for the manufacture of apparel and furnishings, printed fabrics
`for the manufacture of apparel and furnishings, knitted fabrics for the manufac-
`ture of apparel and furnishings, fabrics for the manufacture of shirts, worsted
`fabrics; bed and table covers, namely, plastic table covers, table cloth of textiles,
`table covers of damask, table coversof non-woven textile fabrics, balanced bed
`covers, bed warmer covers, bed covers of paper, canopies, namely, bed canop-
`ies and crib canopies; fabrics for textile use and plastic woven material, namely,
`woven fabrics; velvet; bath linen for toilet use, household linen, bath linen,bed
`linen, table linen, not of paper, comforters, duvets and table cloths not of paper,
`textile tissues, handkerchiefs;bedding, namely, bed sheets and pillowcases sold
`as a set in pouches; cloth handkerchiefs, textile handkerchiefs
`Class 025. First use: First Use: 0 First Use In Commerce: 0
`Clothing for men, women, young men, young women, boys and girls and babies,
`namely, jumpers, tops, belts, shorts, shins, namely, leg warmers, dresses, skirts,
`pants, layettes, jackets, beach clothing, namely, bathing suits, ties, gabardines,
`knitted clothing, namely, shirts, dresses, knitwear, namely, shirts,
`dresses,blazers, jackets, weatherproof clothing, namely, jackets, boots, pants,
`rainproof clothing, namely, jackets, boots, pants, waterproof clothing, namely,
`jackets, boots, pants, hoods, leather clothing,namely, jackets, boots, pants, den-
`ims, stuff jackets; sportswear, namely, jumpers, tops, belts, shorts, shins,
`namely, leg warmers, dresses, skirts, pants, layettes, jackets, beach clothing,
`namely, bathing suits, ties, gabardines, knittedclothing, namely, shirts, dresses,
`knitwear namely, shirts, dresses, blazers, jackets, weatherproof clothing,
`namely, jackets, boots, pants, rainproof clothing, namely, jackets, boots, pants,
`waterproof clothing, namely, jackets, boots, pants, hoods, leather clothing,
`namely, jackets, boots, pants, denims, stuff jackets; swimming costumes, bath-
`robes, dressing gowns, sweaters, shirts, ladies' shirts, blouses, suits, dresses,
`skins, namely, dresses made from skins, trousers, jeans, neckties, sashes for
`wear, scarves, gloves, waistcoats, waterproof jackets, raincoats, gabardines,
`reefer jackets,overcoats, duffel coats, parkas, sportsjackets, coats shirts,
`smocks, t-shirts, polo shirts, shorts, overcoats, pullovers, pajamas, underwear,
`lingerie, layettes, knitwear, namely, knit tops and knit dresses, jackets, socks,
`
`

`
`shoes, slippers, footwear, slippers, beach or sports footwear, headgear, namely,
`hats and caps, belts, suspenders
`
`Attachments
`
`79137195#TMSN.png( bytes )
`Opposition against 86217517 - 7-1-15.pdf(286689 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
`
`/justinryoung/
`Justin R. Young
`07/01/2015
`
`

`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition No.
`
`
`
`In the matter of Application Serial No. 86/217517
`For the mark THE WELL OF ST. JAMES
`Published in the "Official Gazette" of March 3, 2015
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Opposer,
`
`
`
`
`Applicant,
`
`
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`
`
`
`
`
`
`
`Tricot Saint-James
`
`
`v.
`
`Postrel, Richard D.
`
`
`
`
`
`
`
`Commissioner for Trademarks
`2900 Crystal Drive
`Arlington, Virginia 22202-3513
`
`
`
`NOTICE OF OPPOSITION
`
`
`
`Tricot Saint-James, ( “Opposer”), a joint stock company organized under the laws of France,
`
`having its principal place of business at Zone Industrielle, Saint-James, 50240, France, believes that it
`
`will be damaged by the registration of the mark “THE WELL OF ST. JAMES”, shown in Serial
`
`Number 86/217517 in International Class 3, and hereby oppose same in accordance with 15 U.S.C. §
`
`1063 and 37 C.F.R. § 2.101.
`
`As grounds for the opposition, Opposer alleges as follows:
`
`1.
`
`Commencing long prior to Applicant’s filing date and prior to any priority date that can be
`
`alleged by Applicant, Opposer has used, and Opposer is now using, the mark “SAINT JAMES” in
`
`connection with the sale, advertising and promotion of various goods, including in particular
`
`perfumes, perfumery, eau de parfum, essential oils for personal use, eaux de toilette, deodorants for
`
`

`
`personal use, scented soaps, hair lotions, scented creams and gels for face and body care, make-up,
`
`cosmetics, cosmetic lotions for the hair and body, bath and shower gels, shampoos, beauty creams for
`
`body care, among others, covered under International Class 3, distributed and sold by Opposer in
`
`commerce.
`
`2. Opposer is the owner of, and will rely herein, upon the Federal Registration No. 4,741,231
`
`for the mark “SAINT JAMES” granted in International Classes 3, 18, 24 and 25. This registered mark
`
`is valid, subsisting, and provide prima facie evidence of Opposer’s ownership of its mark “SAINT
`
`JAMES”, of the validity of said mark, and of Opposer’s exclusive right to use the mark in commerce
`
`for the goods specified in said registrations. See Exhibit “A”.
`
`3. Opposer has extensive common law rights in the mark “SAINT JAMES” in connection
`
`with various goods, including perfumes and other related goods covered under International Class 3.
`
`4.
`
`Since the initial adoption and use of Opposer’s mark “SAINT JAMES” Opposer has
`
`engaged in extensive advertising and generated significant sales of its goods under said mark.
`
`5.
`
`By virtue of the aforesaid extensive use, advertising, sale and promotion, consumers have
`
`come to recognize and associate Opposer’s mark “SAINT JAMES” with Opposer and its goods. As a
`
`result, Opposer has acquired substantial and valuable goodwill in the mark “SAINT JAMES” and the
`
`mark has become a distinctive indicator of the origin of Opposer’s goods long prior to the filing date
`
`of the opposed application, and prior to any priority date that can be alleged by Applicant.
`
`6. Notwithstanding Opposer’s prior established rights in the marks “SAINT JAMES,”
`
`Applicant has filed Application No. 86/217517 with the United States Patent and Trademark Office on
`
`March 11, 2014 for “promotional and novelty items, namely, religious-theremed perfumes and
`
`perfume sprays” in International Class 3, as evidenced by the publication of said mark in the Official
`
`Gazette of the March 3, 2015 issue.
`
`7. Applicant’s application to register the mark “THE WELL OF ST. JAMES” is without
`
`Opposer’s consent or permission.
`
`

`
`8.
`
`There is no issue as to priority. The filing date of Applicant’s mark and any priority date
`
`that could be alleged by Applicant are subsequent to the first use date of Opposer’s mark “SAINT
`
`JAMES,” and subsequent to the introduction and use of Opposer’s mark “SAINT JAMES” to the
`
`marketplace and the purchasing public.
`
`9.
`
`The mark “THE WELL OF ST. JAMES” that Applicant seeks to register so closely
`
`resembles Opposer’s mark “SAINT JAMES” in appearance, sound, and meaning that the use and
`
`registration thereof is likely to create the same overall impression on consumers and to cause
`
`confusion, mistake, and deception as to the source or origin of Applicant’s services and will injure and
`
`damage Opposer and the goodwill and reputation symbolized by its mark “SAINT JAMES.”
`
`10. Applicant’s goods are identical or so closely related to Opposer’s goods that the public is
`
`likely to be confused, to be deceived, and to assume erroneously that Applicant’s goods are those of
`
`Opposer, or that Applicant is in some way connected or affiliated with, or sponsored by Opposer, all to
`
`Opposer’s irreparable damage.
`
`11. Likelihood of confusion in this case is enhanced by the fact that consumers associate the
`
`mark “SAINT JAMES” with goods sold, approved, or endorsed by Opposer; furthermore, purchasers
`
`of Applicant’s goods are prospective purchasers of Opposer’s goods, and vice-versa.
`
`12. Applicant’s mark “THE WELL OF ST. JAMES” will be marketed and sold to the same
`
`consumers and through the same trade channels than Opposer’s “SAINT JAMES” mark, therefore, is
`
`likely to cause confusion or mistake, or to deceive, within the meaning of Section §2(d) of the
`
`Trademark Act.
`
`13. Applicant’s mark “THE WELL OF ST. JAMES” so closely resembles Opposer’s “SAINT
`
`JAMES” mark that it is deceptive in that it falsely suggests a connection with or approval by Opposer,
`
`in violation of Section §2(a) of the Trademark Act. Indeed, Applicant’s mark points uniquely to
`
`Opposer, and purchasers will assume that clothing offered under Applicant’s alleged mark are
`
`connected with or approved by Opposer.
`
`

`
`14.
`
`If Applicant is permitted to use and register its mark for the goods covered by the opposed
`
`application, confusion resulting in damage and injury to Opposer will likely occur.
`
`15.
`
`If Applicant were granted the registration herein opposed it would thereby obtain at least a
`
`prima facie exclusive right to its mark and the use thereof. Such registration will be a source of
`
`damage and injury to Opposer.
`
`WHEREFORE, Opposer respectfully requests that this opposition be sustained and that
`
`Application Serial No. 86/217517 be refused, and for such other and further relief as the
`
`Commissioner of Patents and Trademarks shall deem proper and required by the Principals of Equity
`
`Trictos Saint-James
`
`By and through their attorney
`
`
`and Good Conscience.
`
`
`
`
`
`
`
`
`
`
`
`Dated: July 1, 2015
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Justin R. Young
`DINEFF TRADEMARK LAW LIMITED
`160 N. Wacker
`Chicago, Illinois 60606
`Phone (312) 338-1000
`Facsimile (312) 338-1500
`jyoung@dineff.com
`
`
`
`
`

`
`
`EXHIBIT
`EXHIBIT
`
`“A”
`“A”
`
`
`
`
`
`

`
`Generated on: This page was generated by TSDR on 2015-07-01 17:11:49 EDT
`
`Mark: SAINT JAMES
`
`US Serial Number: 79137195
`
`US Registration Number: 4741231
`
`Register: Principal
`
`Mark Type: Trademark
`
`Application Filing Date: May 02, 2013
`
`Registration Date: May 26, 2015
`
`Status: Registered. The registration date is used to determine when post-registration maintenance documents are due.
`
`Status Date: May 26, 2015
`
`Publication Date: Mar. 10, 2015
`
`
`
`Mark Information
`
`Mark Literal Elements: SAINT JAMES
`
`Standard Character Claim: Yes. The mark consists of standard characters without claim to any particular font style, size, or color.
`
`Mark Drawing Type: 4 - STANDARD CHARACTER MARK
`
`Color(s) Claimed: Color is not claimed as a feature of the mark.
`Related Properties Information
`
`International Registration
`Number:
`
`1178246
`
`International Registration
`Date:
`
`May 02, 2013
`
`Claimed Ownership of US
`Registrations:
`
`2361110
`
`Goods and Services
`
`Note: The following symbols indicate that the registrant/owner has amended the goods/services:
`
`Brackets [..] indicate deleted goods/services;
`Double parenthesis ((..)) identify any goods/services not claimed in a Section 15 affidavit of incontestability; and
`Asterisks *..* identify additional (new) wording in the goods/services.
`
`For: Perfumes, perfumery, eau de parfum, essential oils for personal use, eaux de toilette, deodorants for personal use, scented soaps, hair
`lotions, scented creams and gels for face and body care, make-up, cosmetics, cosmetic lotions for the hair and body, bath and shower
`gels, shampoos, beauty creams for body care
`
`International Class(es): 003 - Primary Class
`
`U.S Class(es): 001, 004, 006, 050, 051, 052
`
`Class Status: ACTIVE
`
`Basis: 66(a)
`
`For: Leather goods, namely, wallets, tanned leather, briefcase, key cases, handbags, luggage, walking sticks, sunshade parasols,
`umbrellas, parasols, leather and mutations of leather, school bags, rucksacks, trunks and suitcases, leather satchel bags, travel bags
`and luggage, beach bags, garment carriers leather and imitation leather boxes, attached cases, make-up cases sold empty, travel sets,
`namely, leather ware, namely, shoes bags and travel cases made of leather, briefcases, leather key cases, toiletry and make-up bags,
`sold empty, wallets, purses not of precious metal, document holders, card cases, namely, credit card cases, calling card cases,
`business card cases
`
`International Class(es): 018 - Primary Class
`
`U.S Class(es): 001, 002, 003, 022, 041
`
`Class Status: ACTIVE
`
`Basis: 66(a)
`
`For: Fabrics and textile products, namely, cotton fabric, curtains made of textiles, woolen fabric, coated fabrics coated with thermoplastic
`coating for use in manufacturing in a wide variety of industries, fabrics for the manufacture of furnishings, fabrics for the manufacture of
`apparel and furnishings, printed fabrics for the manufacture of apparel and furnishings, knitted fabrics for the manufacture of apparel
`and furnishings, fabrics for the manufacture of shirts, worsted fabrics; bed and table covers, namely, plastic table covers, table cloth of
`textiles, table covers of damask, table covers of non-woven textile fabrics, balanced bed covers, bed warmer covers, bed covers of
`paper, canopies, namely, bed canopies and crib canopies; fabrics for textile use and plastic woven material, namely, woven fabrics;
`velvet; bath linen for toilet use, household linen, bath linen, bed linen, table linen, not of paper, comforters, duvets and table cloths not
`of paper, textile tissues, handkerchiefs; bedding, namely, bed sheets and pillowcases sold as a set in pouches; cloth handkerchiefs,
`textile handkerchiefs
`
`International Class(es): 024 - Primary Class
`
`U.S Class(es): 042, 050
`
`Class Status: ACTIVE
`
`Basis: 66(a)
`
`For: Clothing for men, women, young men, young women, boys and girls and babies, namely, jumpers, tops, belts, shorts, shins, namely,
`
`

`
`leg warmers, dresses, skirts, pants, layettes, jackets, beach clothing, namely, bathing suits, ties, gabardines, knitted clothing, namely,
`shirts, dresses, knitwear, namely, shirts, dresses, blazers, jackets, weatherproof clothing, namely, jackets, boots, pants, rainproof
`clothing, namely, jackets, boots, pants, waterproof clothing, namely, jackets, boots, pants, hoods, leather clothing, namely, jackets,
`boots, pants, denims, stuff jackets; sportswear, namely, jumpers, tops, belts, shorts, shins, namely, leg warmers, dresses, skirts, pants,
`layettes, jackets, beach clothing, namely, bathing suits, ties, gabardines, knitted clothing, namely, shirts, dresses, knitwear namely,
`shirts, dresses, blazers, jackets, weatherproof clothing, namely, jackets, boots, pants, rainproof clothing, namely, jackets, boots, pants,
`waterproof clothing, namely, jackets, boots, pants, hoods, leather clothing, namely, jackets, boots, pants, denims, stuff jackets;
`swimming costumes, bathrobes, dressing gowns, sweaters, shirts, ladies' shirts, blouses, suits, dresses, skins, namely, dresses made
`from skins, trousers, jeans, neckties, sashes for wear, scarves, gloves, waistcoats, waterproof jackets, raincoats, gabardines, reefer
`jackets, overcoats, duffel coats, parkas, sports jackets, coats shirts, smocks, t-shirts, polo shirts, shorts, overcoats, pullovers, pajamas,
`underwear, lingerie, layettes, knitwear, namely, knit tops and knit dresses, jackets, socks, shoes, slippers, footwear, slippers, beach or
`sports footwear, headgear, namely, hats and caps, belts, suspenders
`
`International Class(es): 025 - Primary Class
`
`U.S Class(es): 022, 039
`
`Class Status: ACTIVE
`
`Basis: 66(a)
`
`Filed Use: No
`
`Filed ITU: No
`
`Filed 44D: No
`
`Filed 44E: No
`
`Filed 66A: Yes
`
`Filed No Basis: No
`
`Basis Information (Case Level)
`
`Currently Use: No
`
`Currently ITU: No
`
`Currently 44D: No
`
`Currently 44E: No
`
`Currently 66A: Yes
`
`Amended Use: No
`
`Amended ITU: No
`
`Amended 44D: No
`
`Amended 44E: No
`
`Currently No Basis: No
`Current Owner(s) Information
`
`Owner Name: TRICOTS SAINT JAMES
`
`Owner Address: Zone industrielle
`F-50240 SAINT-JAMES
`FRANCE
`
`Legal Entity Type: SAS
`
`State or Country Where
`Organized:
`Attorney/Correspondence Information
`
`FRANCE
`
`Attorney Name: Laurel V. Dineff
`
`Attorney Primary Email
`Address:
`
`tmlaw@dineff.com
`
`Correspondent
`Name/Address:
`
`Justin R. Young
`Dineff Trademark Law Limited
`160 North Wacker Drive
`Chicago, ILLINOIS 60606
`UNITED STATES
`
`Phone: 3123381000
`
`Correspondent e-mail: tmlaw@dineff.com jyoung@dineff.com
`
`Domestic Representative
`Name:
`
`Laurel V. Dineff
`
`Fax: 3123381500
`
`Domestic Representative
`e-mail:
`
`tmlaw@dineff.com
`
`Date
`
`Description
`
`Attorney of Record
`Docket Number: TM6255US00
`
`Attorney Email
`Authorized:
`
`Yes
`
`Correspondent
`
`Fax: 3123381500
`
`Correspondent e-mail
`Authorized:
`
`Yes
`
`Domestic Representative
`
`Phone: 3123381000
`
`Domestic Representative
`e-mail Authorized:
`Prosecution History
`
`Yes
`
`May 26, 2015
`Apr. 03, 2015
`Mar. 18, 2015
`Mar. 18, 2015
`Mar. 16, 2015
`Mar. 16, 2015
`
`REGISTERED-PRINCIPAL REGISTER
`NOTIFICATION OF POSSIBLE OPPOSITION - PROCESSED BY IB
`NOTIFICATION OF POSSIBLE OPPOSITION SENT TO IB
`NOTIFICATION OF POSSIBLE OPPOSITION CREATED, TO BE SENT TO IB
`LETTER OF PROTEST EVIDENCE REVIEWED
`LETTER OF PROTEST ACCEPTED
`
`Proceeding
`Number
`
`78478
`
`

`
`Mar. 10, 2015 OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED
`Mar. 10, 2015
`PUBLISHED FOR OPPOSITION
`Mar. 06, 2015
`NOTIFICATION PROCESSED BY IB
`Feb. 18, 2015
`NOTIFICATION OF POSSIBLE OPPOSITION SENT TO IB
`Feb. 18, 2015
`NOTICE OF START OF OPPOSITION PERIOD CREATED, TO BE SENT TO IB
`Feb. 18, 2015
`NOTIFICATION OF NOTICE OF PUBLICATION E-MAILED
`Feb. 05, 2015
`LAW OFFICE PUBLICATION REVIEW COMPLETED
`Feb. 05, 2015
`APPROVED FOR PUB - PRINCIPAL REGISTER
`Feb. 05, 2015
`EXAMINER'S AMENDMENT ENTERED
`Feb. 05, 2015
`NOTIFICATION OF EXAMINERS AMENDMENT E-MAILED
`Feb. 05, 2015
`EXAMINERS AMENDMENT E-MAILED
`Feb. 05, 2015
`EXAMINERS AMENDMENT -WRITTEN
`Feb. 03, 2015
`PREVIOUS ALLOWANCE COUNT WITHDRAWN
`Jan. 20, 2015 WITHDRAWN FROM PUB - OG REVIEW QUERY
`Jan. 03, 2015
`LAW OFFICE PUBLICATION REVIEW COMPLETED
`Dec. 29, 2014
`APPROVED FOR PUB - PRINCIPAL REGISTER
`Dec. 29, 2014
`EXAMINER'S AMENDMENT ENTERED
`Dec. 29, 2014 NOTIFICATION OF EXAMINERS AMENDMENT E-MAILED
`Dec. 29, 2014
`EXAMINERS AMENDMENT E-MAILED
`Dec. 29, 2014
`EXAMINERS AMENDMENT -WRITTEN
`Dec. 29, 2014
`TEAS/EMAIL CORRESPONDENCE ENTERED
`Dec. 29, 2014 CORRESPONDENCE RECEIVED IN LAW OFFICE
`Dec. 23, 2014
`TEAS REQUEST FOR RECONSIDERATION RECEIVED
`Jun. 27, 2014
`NOTIFICATION OF FINAL REFUSAL EMAILED
`Jun. 27, 2014
`FINAL REFUSAL E-MAILED
`Jun. 27, 2014
`FINAL REFUSAL WRITTEN
`May 23, 2014
`AMENDMENT FROM APPLICANT ENTERED
`May 23, 2014
`CORRESPONDENCE RECEIVED IN LAW OFFICE
`May 12, 2014
`ASSIGNED TO LIE
`Apr. 28, 2014
`FAX RECEIVED
`Jan. 17, 2014
`ATTORNEY REVOKED AND/OR APPOINTED
`Jan. 17, 2014
`TEAS REVOKE/APPOINT ATTORNEY RECEIVED
`Nov. 16, 2013 REFUSAL PROCESSED BY IB
`Oct. 28, 2013
`NON-FINAL ACTION MAILED - REFUSAL SENT TO IB
`Oct. 25, 2013
`REFUSAL PROCESSED BY MPU
`Oct. 25, 2013
`APPLICATION FILING RECEIPT MAILED
`Oct. 22, 2013
`NON-FINAL ACTION (IB REFUSAL) PREPARED FOR REVIEW
`Oct. 21, 2013
`NON-FINAL ACTION WRITTEN
`Oct. 21, 2013
`ASSIGNED TO EXAMINER
`Oct. 21, 2013
`NEW APPLICATION OFFICE SUPPLIED DATA ENTERED IN TRAM
`Oct. 18, 2013
`SN ASSIGNED FOR SECT 66A APPL FROM IB
`International Registration Information (Section 66a)
`
`International Registration
`Number:
`
`1178246
`
`Priority Claimed Flag: Yes
`
`International Registration
`Date:
`
`May 02, 2013
`
`Date of Section 67 Priority
`Claim:
`
`Apr. 24, 2013
`
`Intl. Registration Status: REQUEST FOR EXTENSION OF PROTECTION
`PROCESSED
`
`Date of International
`Registration Status:
`
`Oct. 18, 2013
`
`Notification of
`Designation Date:
`
`Oct. 17, 2013
`
`Date of Automatic
`Protection:
`
`Apr. 17, 2015
`
`70884
`
`88888
`6328
`6328
`78478
`
`99910
`70884
`
`88888
`6328
`6328
`78478
`70884
`70884
`
`78478
`70884
`70884
`70884
`
`76826
`
`78478
`78478
`
`

`
`International Registration
`Renewal Date:
`
`May 02, 2023
`
`First Refusal Flag: Yes
`
`TM Staff and Location Information
`
`TM Staff Information - None
`File Location
`
`Current Location: PUBLICATION AND ISSUE SECTION
`
`Date in Location: Mar. 16, 2015
`
`

`
`SAINT JAMES
`
`Reg, No, 4,741,231
`
`TRICOTS SAINT JAMES (FRANCE SAS)
`ZONE INDUSTRIELLE
`
`Registered May 26, 2015 F-50240 SAINTJAMFS
`FRANCE
`
`Int. Cls.: 3, 18, 24 and 25
`
`TRADEMARK
`
`PRINCIPAL REGISTER
`
`FOR: PERFUMES, PERFLMERY, EAU DE PARFUM, ESSENTIAL OILS FOR PERSONAL
`USE, EAUX DE TOILETTE, DEODORANTS FOR PERSONAL USE, SCENTED SOAPS, HAIR
`LOTIONS, SCENTED CREAMS AND GELS FOR FACE AND BODY CARE, MAKE-UP,
`COSMETICS, COSMETIC LOTIONS FOR THE HAIR AND BODY, BATH AND SHOWER
`GELS, SHAMPOOS, BEAUTY CREAMS FOR BODY CARE, IN CLASS 3 (US. CLS. 1, 4, 6,
`50, 51 AND 52).
`
`FOR: LEATHER GOODS, NAMELY, WALLETS, TANNED LEATHER, BRIEFCASE, KEY
`CASES, HANDBAGS, LUGGAGE, WALKING STICKS, SUNSHADE PARASOLS, UMBREL-
`LAS, PARASOLS, LEATHER AND MUTATIONS OF LEATHER, SCHOOL BAGS, RUCK-
`SACKS, TRIJNKS AND SUI ICASES, LEATHER SATCHEL BAGS, TRAVEL BAGS AND
`LUGGAGE, BEACH BAGS, GARMENT CARRIERS LEATHER AND IMITATION LEATHER
`BOXES, ATTACIIED CASES. MAKE-UP CASES SOLD EMPTY, TRAVEL SETS, NAMELY,
`LEATHER WARE, NAMELY, SHOES BAGS AND TRAVEL CASES MADE OF LEATHER,
`BRIEFCASES, LEATHER KEY CASES, TOILETRY AND MAKE—UP BAGS, SOLD EMPTY,
`WALLETS, PURSES NOT OF PRECIOUS METAL, DOCUMENT HOLDERS, CARD CASES,
`NAMELY, CREDIT CARD CASES, CALLING CARD CASES, BUSINESS CARD CASES, IN
`CLASS 18 (US. CLS. I, 2, 3, 22 AND 41).
`
`FOR: FABRICS AND TEXTILE PRODUCTS, NAMELY, COTTON FABRIC, CURTAINS
`MADE OF TEXTILES, WOOLEN FABRIC, COATED FABRICS COATED WI"H THERMO-
`PLASTIC COATING FOR USE IN MANUFACTURING INA WIDEVA RIETY OF INDIISTRIES,
`FABRICS FOR THE MANUFACTURE OF FURNISHINGS, FABRICS FOR THE MANUFAC-
`TURE OF APPAREL AND FURNISHINGS, PRINTED FABRICS FOR THE MANUFACTURE
`OF APPAREL AND FURNISHINGS, KNITTED FABRICS FOR THE MANUFACTURE OF
`APPAREL AND FURNISHINGS, FABRICS FOR THE MANUFACTLRE OF SHIR"S, WORSTED
`FABRICS; BED AND TABLE COVERS, NAMELY, PLASTIC TABLE COVERS, TABLE
`CLOTH OF TEXTILES, TABLE COVERS OF DAMASR, TABLE COVERS OF \l0N—WOVEN
`TEXTILE FABRICS, BALANCED BED COVERS, BED WARMER COVERS, BED COVERS
`OF PAPER, CANOPIES, NAMELY, BED CANOPIES AND CRIB CANOPIES; FABRICS FOR
`TEXTILE USE AND PLASTIC WOVEN MATERIAL, NAMELY, WOVEN FABRICS; VELVET;
`BATH LINEN FOR TOILET USE, HOUSEHOLD LINEN, BATH LINEN, BED LINEN, TABLE
`
`Director of the United States
`Patent and Trademark Office
`
`

`
`Reg_ No_
`
`1
`
`LINEN, NOT OF PAPER, COMFORTERS, DUVETS AND TABLE CLOTHS NOT OF PAPER,
`TEXTILE TISSUES, HANDKERCHIEFS; BEDDING, NAMELY, BED SHEETS AND PILLOW-
`CASES SOLD AS A SET IN POUCHES; CLOTH HANDKERCHIEFS, TEXTILE HANDKER-
`CHIEFS, IN CLASS 24 (US CLS. 42 AND 50).
`
`FOR: CLOTHING FOR MEN, WOMEN, YOUNG MEN, YOUNG WOMEN, BOYS AND GIRLS
`AND BABIES, NAMELY, JUMPERS, TOPS, BELTS, SIIORTS, SIIINS, NAMELY, LEG
`WARMERS, DRESSES, SKIRTS, PANTS, LAYETTES, JACKETS, BEACH CLOTHING,
`NAMELY, BATHING SUITS, TIES, GABARDINES, KNITTED CI.OTHING, NAMEI .Y, SHIRTS,
`DRESSES, KNITWEAR, NAMELY, SHIRTS, DRESSES, BLAZERS, JACKETS, WEATHER-
`PROOF CLOTHING, NAMELY, JACKETS, BOOTS, PANTS, RAINPROOF CLOTHING,
`NAMELY, JACKETS, BOOTS, PANTS, WATERPROOF CLOTHING, NAMELY, JACKETS,
`BOOTS, PANTS, HOODS, LEATHER CLOTHING, NAMELY, JACKETS, BOOTS, PANTS,
`DENIMS, STUFF JACKETS; SPORTSWEAR, NAMELY, JUMPERS, TOPS, BELTS, SHORTS,
`SHINS, NAMELY, LEG WARMERS, DRESSES, SKIRTS, PANTS, LAYETTES, JACKETS,
`BEACH CLOTHING, NAMELY, BATHING SUITS, TIES, GABARDINES, KNITTED
`CLOTIIING, NAMELY, SIIIR"S, DRESSES, KNI"WEAR NAMELY, SIIIRTS, DRESSES,
`BLAZERS, JACKETS, WEATHERPROOF CLOTHING, NAMELY, JACKETS, BOOTS, PANTS,
`RAINPROOF CLOTHING, NA MEI ,Y, JACKETS, BOOTS, PANTS, WATERPROOF CLOTHING,
`NAMELY, JACKETS, BOOTS, PANTS, HOODS, LEATHER CLOTHING, NAMELY, JACKETS,
`BOOTS, PANTS, DENIMS, STUFF JACKETS; SWIMMING COSTUMES, BATHROBES,
`DRESSING GOWNS, SWEATERS, SHIRTS, LADIES’ SHIRTS, BLOUSES, SUITS, DRESSES,
`SKINS, NAMELY, DRESSES MADE FROM SKINS, TROUSERS, JEANS, NECKTIES, SASHES
`FOR WEAR, SCARVES, GLOVES, WAIS"COATS, WATERPROOF JACKETS, RAINCOATS,
`GABARDINES, REEFER JACKETS, OVERCOATS, DUFFEL COATS, PARKAS, SPORTS
`JACKETS, COATS SHIRTS, SMOCKS, T—SHIRTS, POLO SHIRTS, SHORTS, OVERCOATS,
`PULLOVERS, PAJAMAS, UNDERWEAR, LINGERIE, LAYETTES, KNITWEAR, NAMELY,
`KNIT TOPS AND KNIT DRESSES, JACKETS, SOCKS, SHOES, SLIPPERS, FOOTWEAR,
`SLIPPERS, BEACH OR SPORTS FOOTWEAR, HEADGEAR, NAMELY, HATS AND CAPS,
`BELTS, SUSPENDERS, IN CLASS 25 (U.S. CLS. 22 AND 39).
`
`THE MARK CONSISTS OF STANDARD CHARACI ERS WITHOUT CLAIM TO ANY PAR-
`TICULAR FONT, STYLE, SIZE, OR COLOR.
`
`PRIORITY DATE OF 4-24-2013 IS CLAIMED.
`
`OWNER OF INTERNATIONAL REGISTRATION 1178246 DATED 5-2-2013, EXPIRES 5-2-
`2023.
`
`OWNER OF U.S. REG. NO. 2,361,110.
`
`SER. NO. 79-137,195, FILED 5-2-2013.
`
`RICHARD WHITE, EXAMINING ATTORNEY
`
`Page: 2 / RN # 4,741,231
`
`

`
`REQUIREMENTS TO MAINTAIN YOUR FEDERAL
`TRADEIVIARK REGISTRATION
`
`WARNIN G: YOUR REGISTRATION WILL BE CANCELLED IF YOU DO N OT FILE THE
`DOCUIVIENTS BELOVV DURING THE SPECIFIED TIIVIE PERIODS.
`
`Requirements in the First Ten Years*
`What and When to File:
`
`First Filing Deadline: You must file a Declaration of Use (or Excusable Nonuse) between the
`5th and 6th years after the registration date. See 15 U.S.C. §§1058, 1141l<.
`If the declaration is
`accepted, the registration will continue in force for the remainder of the ten-year period, calculated
`from the registration date, unless cancelled by an order of the Commissioner for Trademarks or a
`federal court.
`
`Second Filing Deadline: You must file a Declaration of Use (or Excusable Nonuse) and em
`Application for Renewal between the 9th and 10th years after the registration date.*
`See 15 USC. §l059.
`
`Requirements in Successive Ten-Year Periods*
`What and When to File:
`
`You must file a Declaration ofUse (or Excusable Nonuse) and an Application for Renewal between
`every 9th and 10th-year period, calculated from the registration date.*
`
`Grace Period Filings*
`
`The above documents will be accepted as timely if filed within six months after the deadlines listed above
`with the payment of an additional fee.
`
`*ATTENTION MADRID PROTOCOL REGISTRANTS: The holder of an international registration with
`an extension of protection to the United States under the Madrid Protocol must timely file the Declarations
`of Use (or Excusable Nonuse) referenced above directly with the United States Patent and Trademark Office
`(USPTO), The time periods for filing are based on the US. registration date (not the international registration
`date). The deadlines and grace periods for the Declarations of Use (or Excusable Nonuse) are identical to
`those for nationally issued registrations.
`See 15 U.S.C. §§1058, 1141k. However, owners of international
`registrations do not file renewal applications at the USPTO. Instead, the holder must file a renewal of the
`underlying international registration at the International Bureau of the World Intellectual Property Organization,
`under Article 7 of the Madrid Protocol, before the expiration of each ten-year term of protection, calculated
`from the date of the international registration. See 15 U.S.C. §1141j. For more information and renewal
`forms for the international registration, see lrttp://www.wipo.int/rnadrid/err’.
`
`NOTE: Fees and requirements for maintaining registrations are subject to change. Please check the
`USPTO website for further information. With the exception of renewal applications for registered
`extensions of protection, you can file the registration maintenance documents referenced above online
`at http://www.uspt0.gov.
`
`NOTE: A courtesy e-mail reminder ofUSPTO maintenance filing deadlines will be sent to trademark
`owners/holders who authorize e-mail communication and maintain a current e-mail address with the
`
`USPTO. To ensure that e-mail is authorized and your address is current, please use the Trademark
`Electronic Application System (TEAS) Correspondence Address and Change of Owner Address Forms
`available at http://www.uspto.goV.
`
`Page: 3 / RN # 4,741,231
`
`

`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a copy of the foregoing NOTICE OF OPPOSITION was served on this date
`
`
`
`July 1, 2015 upon Applicant’s Attorney correspondence address of record by First-Class mail, postage
`
`prepaid, as follows:
`
`Anthony R Barkume
`Barkume & Associates, P.C.
`20 Gateway Lane
`Manorville, NEW YORK 11949
`UNITED STATES
`Phone: 6312599099
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Justin R. Young