Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA798167
`01/30/2017
`
`ESTTA Tracking number:
`
`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
`
`Attorney informa-
`tion
`
`Geoffrey, LLC
`
`01/29/2017
`
`One Geoffrey Way
`Wayne, NJ 07470
`UNITED STATES
`
`Megan E. Spitz
`Blank Rome LLP
`One Logan Square
`Philadelphia, PA 19103
`UNITED STATES
`mhomyk@blankrome.com, spitz@blankrome.com Phone:215-569-5745
`
`Applicant Information
`
`Application No
`
`86926794
`
`Publication date
`
`08/02/2016
`
`Opposition Filing
`Date
`
`Applicant
`
`01/30/2017
`
`TOYS 4 U USA CORP.
`232 LEE AVENUE
`Brooklyn, NY 11206
`UNITED STATES
`
`Opposition Peri-
`od Ends
`
`01/29/2017
`
`Goods/Services Affected by Opposition
`
`Class 035. First Use: 2005/05/08 First Use In Commerce: 2005/05/08
`All goods and services in the class are opposed, namely: Wholesale and retail store services featur-
`ing toys, games, dolls, arts, crafts,scooters and bikes; On-line wholesale and retail store services fea-
`turing toys,games, dolls, arts, crafts, scooters and bikes
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`Dilution by blurring
`
`Trademark Act Sections 2 and 43(c)
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`
`2442370
`
`Registration Date
`
`04/10/2001
`
`Word Mark
`
`R US
`
`Application Date
`
`12/20/1999
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 016. First use: First Use: 1999/10/00 First Use In Commerce: 1999/10/00
`Gift cards
`
`U.S. Registration
`No.
`
`2282394
`
`Registration Date
`
`10/05/1999
`
`Word Mark
`
`Design Mark
`
`"R" US
`
`Application Date
`
`08/08/1996
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 035. First use: First Use: 1960/00/00 First Use In Commerce: 1960/00/00
`retail department store services
`
`U.S. Registration
`No.
`
`4176651
`
`Registration Date
`
`07/17/2012
`
`Word Mark
`
`TOYS R US PETS
`
`Application Date
`
`03/30/2011
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 028. First use: First Use: 2012/05/07 First Use In Commerce: 2012/05/07
`Pet toys
`
`U.S. Registration
`No.
`
`2970366
`
`Registration Date
`
`07/19/2005
`
`Application Date
`
`04/05/2004
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`GEOFFREY'S TOYS "R" US
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 035. First use: First Use: 2003/08/00 First Use In Commerce: 2003/08/00
`RETAIL DEPARTMENT STORE SERVICES
`
`U.S. Registration
`No.
`
`3003574
`
`Registration Date
`
`10/04/2005
`
`Application Date
`
`07/09/2003
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`TOYS "R" US TOY BOX
`
`NONE
`
`Class 035. First use: First Use: 2001/08/09 First Use In Commerce: 2001/08/09
`Retail store services in a section of afood store featuring a variety of consumer
`goods, namely, toys, games, sportinggoods, arts and crafts goods, cos-
`tumes,baskets, kites, musical toys, inflatable pools and bicycles
`
`

`

`U.S. Registration
`No.
`
`2797686
`
`Registration Date
`
`12/23/2003
`
`Application Date
`
`12/17/2002
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`TOYS "R" US
`
`NONE
`
`Class 036. First use: First Use: 1992/00/00 First Use In Commerce: 1992/00/00
`Charitable fund raising and charitable grantmaking services
`
`U.S. Registration
`No.
`
`3815634
`
`Registration Date
`
`07/06/2010
`
`Word Mark
`
`Design Mark
`
`TOYSRUS
`
`Application Date
`
`06/30/2009
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 2009/11/30 First Use In Commerce: 2009/11/30
`Batteries
`
`U.S. Registration
`No.
`
`3724925
`
`Registration Date
`
`12/15/2009
`
`Word Mark
`
`Design Mark
`
`TOYSRUS
`
`Application Date
`
`04/15/2009
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of the words "TOYSRUS" with a backwards letter "R" with a
`star design in the center.
`
`Class 035. First use: First Use: 2007/09/30 First Use In Commerce: 2007/09/30
`Retail store and on-line retail store services all featuring toys, games, playthings,
`natural wooden toys, natural plush animals, organic cotton dolls, dolls, doll
`houses, doll accessories, doll house furniture, furniture, clothing, baby clothing,
`children's clothing, maternity clothing, outdoor toys, play sets, sandboxes, play
`
`

`

`swimming pools, swimming aids, pool rings, life jackets and arm floats for recre-
`ational use, outdoor play sets, sporting goods and equipment, roller skates, in-
`line skates, toy cars, toys trucks, toy airplanes, toy vehicle play sets, toy race
`tracks, toy action figuresand play sets, toy activity tables for children with stor-
`age, toy boxes, board games, hand-held electronic games, puzzles, dolls, doll
`accessories, plush toys,educational toys, microscopes, telescopes, binoculars,
`science experiment kits,nature kits, magic sets, remote controlvehicles and toys;
`retail store and on-line retail store services all featuringdress-up sets, Halloween
`costumes, books, cassettes, videos, CDs, DVDs, portable digital media players,
`musical instruments, toy musical instruments and microphones, computers, toy
`computers, educational computers, computer and video games, computer and
`video game consoles and accessories, home and car electronics, baby safety
`items, baby monitors, humidifiers, vaporizers, baby food and formula, food,
`beverages, utensils and accessories; retail store and on-line retail storeservices
`all featuring diapers, medicine, skin and hair care products, bedding and room
`decor, baby furniture, children's furniture, adult furniture, rocking chairs, lamps,
`light fixtures, safety gates, safety night lights, rear view mirror attachments, car
`seats, high chairs, step stools, booster seats, carriages andstrollers; retail store
`and on-line retail store services all featuring bicycles, tricycles, toy motorized
`vehicles, ride-on toys, playpens, portable playpens,baby travel systems, play
`yards and beds for children, bed linen, comforters, pillow cases, rugs, wall pa-
`per, swings and bouncers, diaper bags and carriers, bath products and bibs; re-
`tail store and on-line retail store services all featuring, pens, paper, crayons, sta-
`tionery, school supplies, artist supplies, stickers, coloring books, puzzle books,
`knapsacks, school bags, sports bags, gift cards and gift wrap; gift registry ser-
`vices
`
`U.S. Registration
`No.
`
`3859458
`
`Registration Date
`
`10/12/2010
`
`Word Mark
`
`Design Mark
`
`TOYS R US
`
`Application Date
`
`11/30/2009
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of the words "TOYSRUS" with a backwards letter "R" in blue
`with a white star design in the center with the letter "T" in red, the letter "O" in or-
`ange, the letter "Y" in green" the letter "S" in red, the letter "U" in green and the
`letter "S" in red.
`
`Class 035. First use: First Use: 2007/09/30 First Use In Commerce: 2007/09/30
`Retail store and on-line retail store services all featuring toys, games, playthings,
`natural wooden toys, natural plush animals, organic cotton dolls, dolls, doll
`houses, doll accessories, doll house furniture, furniture, clothing, baby clothing,
`children's clothing, maternity clothing, outdoor toys, play sets, sandboxes, play
`swimming pools, swimming aids, pool rings, life jackets and arm floats for recre-
`ational use, outdoor play sets, sporting goods and equipment, roller skates, in-
`line skates, toy cars, toys trucks, toy airplanes, toy vehicle play sets, toy race
`tracks, toy action figuresand play sets, toy activity tables for children with stor-
`age, toy boxes, board games, hand-held electronic games, puzzles, dolls, doll
`accessories, plush toys,educational toys, microscopes, telescopes, binoculars,
`
`

`

`science experiment kits,nature kits, magic sets, remote controlvehicles and toys;
`retail store and on-line retail store services all featuringdress-up sets, Halloween
`costumes, books, cassettes, videos, CDs, DVDs, portable digital media players,
`musical instruments, toy musical instruments and microphones, computers, toy
`computers, educational computers, computer and video games, computer and
`video game consoles and accessories, home and car electronics, baby safety
`items, baby monitors, humidifiers, vaporizers, baby food and formula, food,
`beverages, and utensils; retail store and on-line retail store services all featuring
`diapers, medicine, skin and hair care products, bedding and room decor, baby
`furniture, children's furniture, adult furniture, rocking chairs, lamps, light fixtures,
`safety gates, safety night lights, rear view mirror attachments, car seats, high
`chairs, step stools, booster seats, carriages and strollers. retail store and on-line
`retail store services all featuring bicycles, tricycles, toy motorized vehicles, ride-
`on toys, playpens, portable playpens, baby travelsystems, play yards and beds
`for children, bed linen, comforters, pillow cases,rugs, wall paper, swings and
`bouncers, diaper bags and carriers, bath products and bibs; retail store and on-
`line retail store services all featuring, pens, paper, crayons, stationery, school
`supplies, artist supplies, stickers, coloring books, puzzle books, knapsacks,
`school bags, sports bags, gift cards and gift wrap; gift registry services
`
`U.S. Registration
`No.
`
`3942695
`
`Registration Date
`
`04/12/2011
`
`Application Date
`
`10/09/2009
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`TOYSRUS HOLDAY EXPRESS
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 035. First use: First Use: 2009/07/31 First Use In Commerce: 2009/07/31
`Retail store and on-line retail store services all featuring toys, games, playthings,
`natural wooden toys, natural plush animals, organic cotton dolls, dolls, doll
`houses, doll accessories, doll house furniture, furniture, clothing, baby clothing,
`children's clothing, maternity clothing, outdoor toys, play sets, sandboxes, play
`swimming pools, swimming aids, pool rings, life jackets and arm floats for recre-
`ational use, outdoor play sets, sporting goods and equipment, roller skates, in-
`line skates, toy cars, toys trucks, toy airplanes, toy vehicle play sets, toy race
`tracks, toy action figuresand play sets, toy activity tables for children with stor-
`age, toy boxes, board games, hand-held electronic games, puzzles, dolls, doll
`accessories, plush toys,educational toys, microscopes, telescopes, binoculars,
`science experiment kits,nature kits, magic sets, remote controlvehicles and toys;
`retail store and on-line retail store services all featuringdress-up sets, Halloween
`costumes, books, cassettes, videos, CDs, DVDs, portable digital media players,
`musical instruments, toy musical instruments and microphones, computers, toy
`computers, educational computers, computer and video games, computer and
`video game consoles and accessories, home and car electronics, baby safety
`items, baby monitors, humidifiers, vaporizers, baby food and formula, food,
`beverages, utensils; retail store and on-line retail store services all featuring di-
`
`

`

`apers, medicine, skin and haircare products, bedding and room decor, baby fur-
`niture, children's furniture, adult furniture, rocking chairs, lamps, light fixtures,
`safety gates, safety nightlights, rear view mirror attachments, car seats, high
`chairs, step stools, booster seats, carriages and strollers; retail store and on-line
`retail store services all featuring bicycles, tricycles, toy motorized vehicles, ride-
`on toys, playpens, portable playpens, baby travel systems, play yards and beds
`for children, bed linen, comforters, pillow cases, rugs, wall paper, swings and
`bouncers, diaper bags and carriers, bath products and bibs; retail store and on-
`line retail store services all featuring, pens, paper,crayons, stationery, school
`supplies, artist supplies, stickers, coloring books, puzzle books, knapsacks,
`school bags, sports bags, gift cards and gift wrap; gift registry services
`
`U.S. Registration
`No.
`
`2758567
`
`Registration Date
`
`09/02/2003
`
`Word Mark
`
`Design Mark
`
`TOYS "R" US
`
`Application Date
`
`09/27/2002
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 039. First use: First Use: 1963/00/00 First Use In Commerce: 1963/00/00
`Truck hauling
`
`U.S. Registration
`No.
`
`2362269
`
`Registration Date
`
`06/27/2000
`
`Word Mark
`
`Design Mark
`
`TOYS ''R'' US
`
`Application Date
`
`08/26/1999
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 035. First use: First Use: 1999/07/00 First Use In Commerce: 1999/07/00
`Retail department store services
`
`U.S. Registration
`No.
`
`2364201
`
`Registration Date
`
`07/04/2000
`
`Application Date
`
`03/18/1999
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Word Mark
`
`Design Mark
`
`TOYS "R" US
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 035. First use: First Use: 1960/00/00 First Use In Commerce: 1960/00/00
`Retail department store services
`
`U.S. Registration
`No.
`
`2370396
`
`Registration Date
`
`07/25/2000
`
`Word Mark
`
`Design Mark
`
`TOYSRUS.COM
`
`Application Date
`
`02/11/1999
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 035. First use: First Use: 1996/12/14 First Use In Commerce: 1996/12/14
`ON-LINE RETAIL DEPARTMENT STORE SERVICES
`
`U.S. Registration
`No.
`
`2063369
`
`Registration Date
`
`05/20/1997
`
`Application Date
`
`06/27/1996
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`TOYS "R" US
`
`NONE
`
`Class 036. First use: First Use: 1995/09/00 First Use In Commerce: 1995/09/00
`credit card services
`
`U.S. Registration
`No.
`
`2019153
`
`Registration Date
`
`11/26/1996
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`TOYS "R" US
`
`NONE
`
`Application Date
`
`11/22/1995
`
`Foreign Priority
`Date
`
`NONE
`
`Goods/Services
`
`Class 042. First use: First Use: 1995/08/14 First Use In Commerce: 1995/08/14
`
`

`

`on line retail store services featuringcomputer related products
`
`U.S. Registration
`No.
`
`1215353
`
`Registration Date
`
`11/02/1982
`
`Word Mark
`
`Design Mark
`
`TOYS "R" US
`
`Application Date
`
`12/17/1980
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 042. First use: First Use: 1960/00/00 First Use In Commerce: 1960/00/00
`Retail Department Store Services
`
`U.S. Registration
`No.
`
`902125
`
`Registration Date
`
`11/10/1970
`
`Word Mark
`
`Design Mark
`
`TOYS "R" US
`
`Application Date
`
`03/19/1969
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 028. First use: First Use: 1960/00/00 First Use In Commerce: 1960/00/00
`GENERAL LINE OF CHILDREN'S TOYS AND TOYNOVELTIES
`
`U.S. Registration
`No.
`
`3647541
`
`Registration Date
`
`06/30/2009
`
`Word Mark
`
`R US
`
`Application Date
`
`01/27/2009
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of a backwards letter"R" with a star in the center and the
`word "US".
`
`Class 035. First use: First Use: 2008/02/04 First Use In Commerce: 2008/02/04
`Retail store and on-line retail store services all featuring toys, games, playthings,
`natural wooden toys, natural plush animals, organic cotton dolls, furniture, cloth-
`ing, outdoor toys, play sets, sandboxes, outdoor play sets, sporting goods and
`equipment, roller skates, in-line skates, toy cars, toy race tracks, toyaction fig-
`ures and play sets, puzzles, dolls, doll accessories, plush toys, educational toys,
`microscopes, telescopes, binoculars, science experiment kits, nature kits, magic
`sets, remote control vehicles and toys; retail store and on-lineretail store ser-
`vices all featuring dress-up sets, Halloween costumes, books, cassettes, videos,
`CDs, DVDs, computer and video games, computer and video game consoles
`and accessories, home and car electronics, baby safety items, baby monitors,
`humidifiers, vaporizers, laundry detergent, baby food and formula, food, bever-
`ages, utensils and accessories; retail store and on-line retail store services all
`featuring diapers, medicine, skin and hair care products, bedding and roomde-
`cor, safety gates, safety night lights, rear view mirror attachments, car seats,
`high chairs, step stools, booster seats, carriages and strollers; retail store and
`on-line retail store services allfeaturing bicycles, tricycles, toy motorized
`vehicles, playpens, portable playpens, play yards and beds for children, bed lin-
`en, comforters, pillow cases, rugs, wall paper, swings and bouncers, diaper
`bags and carriers, bath products and bibs; retail store and on-line retail store
`services all featuring, pens, paper, crayons, stationery, school supplies, artist
`supplies, knapsacks, school bags, sports bags, gift cards and gift wrap; gift re-
`gistry services
`
`Attachments
`
`75876241#TMSN.png( bytes )
`75147288#TMSN.png( bytes )
`85280842#TMSN.png( bytes )
`78396219#TMSN.png( bytes )
`77771324#TMSN.png( bytes )
`77714904#TMSN.png( bytes )
`77881922#TMSN.png( bytes )
`77845209#TMSN.png( bytes )
`76453343#TMSN.png( bytes )
`75786109#TMSN.png( bytes )
`75662997#TMSN.png( bytes )
`75639021#TMSN.png( bytes )
`73290146#TMSN.png( bytes )
`
`

`

`72320104#TMSN.png( bytes )
`77657237#TMSN.png( bytes )
`opposition.pdf(185636 bytes )
`
`Signature
`
`/matthew homyk/
`
`Name
`
`Date
`
`Matthew A. Homyk
`
`01/30/2017
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`
`86/926,794
`
`March 2, 2016
`
`TOYS4U
`
`
`
`
`
`
`
`
`
`In re Application of TOYS 4 U USA CORP.
`
`Application No.:
`
`Filed:
`
`Mark:
`
`___________________________________
`Geoffrey, LLC,
`
` :
`a Delaware limited liability
`:
`company
`
`
`
`
`
`:
`
`
`
`
`
`:
`Opposer,
` :
`
`:
` : Opposition No.: ______
`
`
`v.
`
`:
`
`
`
`
`
`
` :
`
`TOYS 4 U USA CORP.,
`
`:
`a New York corporation,
`
`:
`
`
`
`
`
`:
`Applicant.
`
`__________________________________ :
`
`Serial No.: 86/926,794
`
`
`
`
`
`Hon. Commissioner for Trademarks
`P.O. Box 1451
`Alexandria, Virginia 22313-1451
`
`Attn.: Trademark Trial and Appeal Board
`
`NOTICE OF OPPOSITION
`
`
`
`
`
`Opposer, Geoffrey, LLC, a Delaware limited liability
`
`company with its principal place of business at One Geoffrey
`
`Way, Wayne, New Jersey 07470, believes that it would be damaged
`
`by the registration of the mark TOYS4U, shown in Application
`
`Serial No. 86/926,794, and hereby opposes the same under the
`
`
`119590.00110/104993570v.1
`
`-1-
`
`

`

`
`provision of Section 13 of the Trademark Act of July 5, 1946, as
`
`amended, 15 U.S.C. § 1063.
`
`As grounds of opposition, it is alleged that:
`
`OPPOSER’S EXCLUSIVE RIGHTS
`
`1.
`
`Opposer, through its predecessors and related
`
`companies, has engaged in the marketing and sale of a wide
`
`variety of products and services, including but not limited to
`
`toys, games, clothing, footwear, bags, administration of
`
`customer loyalty programs, advertising, marketing, promotional
`
`services, novelties, baby products, strollers, car seats, baby
`
`carriers, furniture, audio and visual products, school supplies,
`
`art supplies, science and other educational goods and equipment,
`
`safety products, electronics and technology related goods,
`
`digital media, musical instruments, eating and drinking utensils
`
`and apparatus, bedding and linens, home decor, medicine, first
`
`aid products, diapers, laundry products, party supplies,
`
`costumes, paper products, gift cards and various retail, credit
`
`card, gift registry and party planning services (the “Goods and
`
`Services”) under the marks TOYS R US and R US (“the TOYS “R” US
`
`Marks”), both with and without quotation marks, both with and
`
`without a reversed letter “Я,” and alone and with other terms.
`
`2. Opposer has made continuous and extensive use of its
`
`distinctive TOYS “R” US Marks, which use has developed
`
`widespread public recognition and appeal since at least as early
`
`
`119590.00110/104993570v.1
`
`-2-
`
`

`

`
`as 1960. Opposer is the world's biggest toy store and baby and
`
`children's products retailer, leading the industry with billions
`
`of dollars in sales annually. Opposer owns and operates over
`
`1600 stores using its R Us family of brands, and currently sells
`
`merchandise in more than 850 stores nationwide, including Toys
`
`"R" Us and Babies "R" Us stores, and more than 750 international
`
`stores and 250 licensed stores in 37 countries and
`
`jurisdictions.
`
`3.
`
`Opposer also provides shoppers with a broad online
`
`selection of products through its branded e-commerce websites;
`
`hosts interactive pages on a variety of social media websites;
`
`and sponsors branded mobile applications to allow consumers to
`
`shop and access information about toys and other products sold
`
`by Opposer virtually anywhere.
`
`4. Opposer is the exclusive owner of all rights, title and
`
`interest in and to the TOYS “R” US Marks and common law rights
`
`therein in connection with the Goods and Services, and is the
`
`owner of United States Registrations and International
`
`Registrations for the TOYS “R” US Marks, which provide
`
`protection in the United States for the same, including without
`
`limitation, TOYS “R” US, U.S. Reg. No. 1,215,353, and many other
`
`registrations. See Exhibit A for a list of many trademark and
`
`service mark registrations owned by Opposer.
`
`
`119590.00110/104993570v.1
`
`-3-
`
`

`

`
`
`5.
`
`As a result of Opposer's long and extensive promotion,
`
`marketing and use of various TOYS R US marks, both with and
`
`without quotation marks, including the advertising and promotion
`
`of third party products sold by Opposer, Opposer has established
`
`and owns a family of R US marks (hereinafter, the "R US Family
`
`of Marks").
`
`6.
`
`Opposer's R US Family of Marks has been recognized by
`
`courts and other judicial and administrative bodies as a famous
`
`family of trademarks known to consumers. J. Thomas McCarthy, a
`
`leading scholar and expert on trademark law, recognizes the R US
`
`Family of Marks among a select group of famous trademark
`
`families in his well-known treatise on trademark law. See J.
`
`Thomas McCarthy, McCarthy of Trademarks and Unfair Competition,
`
`4th Edition §23.61, pg. 23-302.
`
`7.
`
`The fame of Opposer's R US Family of Marks is also
`
`reflected in market rankings and awards. In January 2015,
`
`Opposer was ranked 13 on Reputation Institute’s Top 50 Most
`
`Reputable U.S. Retail Companies list. In 2015, Opposer was
`
`ranked 245 on the Fortune 500 list. In 2014, STORES magazine
`
`includes Toys “R” Us in its Top 100 Retailers List. Deloitte
`
`also named Toys "R" Us as one of 2015's top "Global Powers of
`
`Retailing."
`
`8.
`
`Opposer's registrations are valid and subsisting and
`
`are conclusive evidence of Opposer's exclusive right to use the
`
`
`119590.00110/104993570v.1
`
`-4-
`
`

`

`
`TOYS “R” US Marks in commerce for the Goods and Services,
`
`including goods and services within its zone of natural
`
`expansion.
`
`9.
`
`Through extensive and continuous use of the TOYS “R”
`
`US Marks, the TOYS “R” US Marks have acquired substantial
`
`goodwill in connection with the Goods and Services.
`
`10. Opposer's extensive marketing, promotion and use of
`
`the TOYS “R” US Marks has caused customers, prospective
`
`purchasers, and the public generally to immediately associate
`
`the TOYS “R” US Marks with Opposer and to expect a wide variety
`
`of toys and related goods and services bearing the TOYS “R” US
`
`Marks to have a connection with, or association with, Opposer.
`
`APPLICANT’S MARK
`
`11. On March 2, 2016, Applicant filed U.S. Application No.
`
`86/926,794 for registration of the mark TOYS4U (hereinafter
`
`“Applicant's Mark”) listing its services as “Wholesale and
`
`retail store services featuring toys, games, dolls, arts,
`
`crafts, scooters and bikes; On-line wholesale and retail store
`
`services featuring toys, games, dolls, arts, crafts, scooters
`
`and bikes.” Applicant’s Mark was published for opposition in the
`
`Official Gazette dated August 2, 2016. See printout from the
`
`United States Patent and Trademark Office database attached as
`
`Exhibit B.
`
`
`119590.00110/104993570v.1
`
`-5-
`
`

`

`
`
`12. Applicant’s basis for filing Applicant’s Mark is
`
`alleged use in commerce since May 8, 2005.
`
`13. Opposer's use of the TOYS “R” US Mark predates
`
`Applicant's application filing date by over 55 years.
`
`14. Opposer's use of the TOYS “R” US Mark predates
`
`Applicant's alleged date of first use in commerce by over 45
`
`years.
`
`15. Applicant's Mark is confusingly similar in appearance
`
`to Opposer's TOYS “R” US Marks because the “TOYS4U” wording
`
`looks confusingly similar to Opposer's famous “TOYSЯUS”
`
`designation.
`
`16. In the application, Applicant declares that it offers
`
`the same services as Opposer, and these services are offered to
`
`the same class of purchasers as Opposer’s customers.
`
`17. The use and registration of Applicant's Mark to
`
`identify its services is likely to cause confusion, mistake, and
`
`deception as to the source, origin, sponsorship, or association
`
`of the services, and is likely to mislead the public and/or
`
`potential clients into believing that Applicant is licensed or
`
`controlled by Opposer or that Applicant is in some way related
`
`to or affiliated with Opposer.
`
`18. Any defects, objections or faults found with the
`
`services offered by Applicant under Applicant's Mark, because of
`
`
`119590.00110/104993570v.1
`
`-6-
`
`

`

`
`the false association with Opposer, would inflict upon and
`
`seriously injure the reputation of Opposer.
`
`19. If Applicant is granted the registration herein
`
`opposed, it would thereby obtain at least a prima facie
`
`exclusive right to the use of the mark TOYS4U. Such registration
`
`would be a source of damage and injury to Opposer, as well as
`
`confusion in the relevant marketplace.
`
`20. The grant of a Certificate of Registration to
`
`Applicant for Applicant’s Mark would be inconsistent with and in
`
`derogation of Opposer's prior rights and would therefore cause
`
`damage and injury to Opposer and deception of and confusion to
`
`the public.
`
`
`
`APPLICANT’S MARK IS LIKELY TO CAUSE CONFUSION
`
`AS TO SOURCE, ORIGIN, SPONSORSHIP, OR AFFILIATION
`
`21. In view of the similarity in overall commercial
`
`impression of the respective marks, the related nature of the
`
`goods and services of the respective parties, and Opposer's
`
`priority as to use of the mark, Opposer alleges that Applicant's
`
`mark TOYS4U so resembles Opposer's R US Family of Marks as to be
`
`likely to cause confusion, or mistake, or to deceive under
`
`Trademark Act Sections 2(d), 15 U.S.C. Section 1052(d), and will
`
`cause damage to Opposer and its goodwill represented by its
`
`prior-used marks.
`
`
`119590.00110/104993570v.1
`
`-7-
`
`

`

`
`
`22. In addition, Opposer's rights and fame in its R US
`
`Family of Marks, including those based on its extensive use,
`
`registrations, and public recognition, were established long
`
`before Applicant commenced use of and filed its application for
`
`the mark TOYS4U. Thus, granting registration to Applicant would
`
`diminish and dilute the distinctive quality of Opposer's rights
`
`in its famous R US Family of Marks in violation of Trademark Act
`
`Section 43(c), 15 U.S.C. Section 1125(c), and could also in the
`
`event of any mishaps involving, or poor quality of, the services
`
`offered by Applicant, tarnish such distinctiveness.
`
`
`
`APPLICANT'S MARK IS LIKELY TO DILUTE THE DISTINCTIVE
`
`QUALITY OF OPPOSER’S FAMOUS MARKS
`
`
`23. At all times prior to both Applicant’s application to
`
`register Applicant’s Mark and any use of Applicant’s Mark by
`
`Applicant, Opposer’s TOYS R US Marks were distinctive and had
`
`already become famous.
`
`24. The fame and high degree of recognition afforded to
`
`the TOYS R US Marks is evident in the significant duration,
`
`extent and geographic reach of advertising and publicity bearing
`
`the marks; widespread and extraordinary sales of the Goods and
`
`Services bearing the TOYS R US Marks; widespread recognition of
`
`the TOYS R US Marks among the general consuming public; and the
`
`registrations of the TOYS R US Marks accorded on the Principal
`
`Register.
`
`119590.00110/104993570v.1
`
`-8-
`
`

`

`
`
`25. That Applicant’s Mark is likely to cause dilution by
`
`blurring is evident in the high degree of similarity between
`
`Applicant’s Mark and the TOYS R US Marks; the high degree of
`
`inherent and acquired distinctiveness of the TOYS R US Marks;
`
`the substantially exclusive use of the TOYS R US Marks on the
`
`Goods and Services; the extraordinary degree of recognition
`
`accorded to the TOYS R US Marks by the general consuming public;
`
`the apparent intent of Applicant to create an association with
`
`the TOYS R US Marks; and any actual association between
`
`Applicant’s Mark and the TOYS R US Marks that would be
`
`established during discovery.
`
`26. The use and registration of Applicant's Mark to
`
`identify its services, after the TOYS R US Marks had become
`
`famous, is therefore likely to cause dilution by blurring or
`
`dilution by tarnishment of the TOYS R US Marks, regardless of
`
`the presence or absence of actual or likely confusion,
`
`competition, or of actual economic injury, and will injure
`
`Opposer.
`
`For the reasons set forth in the foregoing paragraphs one
`
`through twenty-six, Opposer believes that it would be damaged by
`
`the registration of Applicant's Mark, and thus Applicant should
`
`be denied registration of the mark.
`
`
`119590.00110/104993570v.1
`
`-9-
`
`

`

`
`
`WHEREFORE, Opposer prays that this opposition be sustained
`
`and that Application Serial No. 86/926,794 be refused
`
`Respectfully submitted,
`
`GEOFFREY, LLC
`
`registration.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Date: January 30, 2017 By: /matthew homyk/
`
`Megan E. Spitz
`
`Matthew A. Homyk
`
`Its Attorneys
`
`
`BLANK ROME LLP
`ONE LOGAN SQUARE
`PHILADELPHIA, PA 19103
`(215) 569-5745
`
`
`
`
`119590.00110/104993570v.1
`
`-10-
`
`

`

`
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`I, Matthew A. Homyk, do hereby certify that I have on January
`30, 2017, mailed via first class mail, the foregoing Notice of
`Opposition to the following:
`
`TOYS 4 U USA CORP.
`232 LEE AVE
`BROOKLYN, NEW YORK 11206-8107
`imperial633@gmail.com
`info.imperials@gmail.com
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`/matthew homyk/
`Matthew A. Homyk
`
`
`
`
`
`
`119590.00110/104993570v.1
`
`-11-
`
`

`

`
`
`EXHIBIT A
`EXHIBIT A
`
`
`
`"
`
`
`
`
`
`

`

`R US Marks
`
`Full Goods/Services
`(Int'l Class: 35) On-line retail department store services
`
`
`(Int'l Class: 35) Retail store and on-line retail store services all featuring
`toys, games, playthings, natural wooden toys, natural plush animals,
`organic cotton dolls, dolls, doll houses, doll accessories, doll house
`furniture, furniture, clothing, baby clothing, children's clothing, maternity
`clothing, outdoor toys, play sets, sandboxes, play swimming pools,
`swimming aids, pool rings, life jackets and arm floats for recreational use,
`outdoor play sets, sporting goods and equipment, roller skates, in-line
`skates, toy cars, toys trucks, toy airplanes, toy vehicle play sets, toy race
`tracks, toy action figures and play sets, toy activity tables for children with
`storage, toy boxes, board games, hand-held electronic games, puzzles,
`dolls, doll accessories, plush toys, educational toys, microscopes,
`telescopes, binoculars, science experiment kits, nature kits, magic sets,
`remote control vehicles and toys; retail store and on-line retail store
`services all featuring dress-up sets, halloween costumes, books,
`cassettes, videos, cds, dvds, portable digital media players, musical
`instruments, toy musical instruments and microphones, computers, toy
`computers, educational computers, computer and video games, computer
`and video game consoles and accessories, home and car electronics,
`baby safety items, baby monitors, humidifiers, vaporizers, baby food and
`formula, food, beverages, utensils; retail store and on-line retail store
`services all featuring diapers, medicine, skin and hair care products,
`bedding and room decor, baby furniture, children's furniture, adult
`furniture, rocking chairs, lamps, light fixtures, safety gates, safety night
`lights, rear view mirror attachments, car seats, high chairs, step stools,
`booster seats, carriages and strollers; retail store and on-line retail store
`services all featuring bicycles, tricycles, toy motorized vehicles, ride-on
`toys, playpens, portable playpens, baby travel systems, play yards and
`beds for children, bed linen, comforters, pillow cases, rugs, wall paper,
`swings and bouncers, diaper bags and carriers, bath products and bibs;
`retail store and on-line retail store services all featuring, pens, paper,
`crayons, stationery, school supplies, artist supplies, stickers, coloring
`books, puzzle books, knapsacks, school bags, sports bags, gift