Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA Tracking number:
`ESTTA927067
`10/09/2018
`
`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
`
`FAT FACE HOLDINGS LIMITED
`10/10/2018
`
`Unit 3 Ridgway
`Havant, Hampshire, PO91QJ
`UNITED KINGDOM
`
`Matthew A. Homyk
`Blank Rome LLP
`One Logan Square
`Philadelphia, PA 19103
`UNITED STATES
`mhomyk@blankrome.com
`215-569-5360
`
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`87764436
`10/09/2018
`
`Publication date
`Opposition Peri-
`od Ends
`
`06/12/2018
`10/10/2018
`
`MY MY STAR INC.
`633 9th St. Suite 1.
`Santa Monica, CA 90402
`UNITED STATES
`Goods/Services Affected by Opposition
`
`Class 009. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Downloadable software for electronic text,
`image, and video messaging
`
`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
`
`5163471
`
`Application Date
`
`07/30/2014
`
`03/21/2017
`
`Foreign Priority
`Date
`FATFACE SINCE 1988 · MADE WELL WORN WELL · UNITED KINGDOM
`
`02/27/2014
`
`

`

`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of wording "FATFACE SINCE 1988 ·MADE WELL WORN
`WELL· UNITED KINGDOM" and a design of three vertical wavy bands sur-
`rounded by a single line circular border located between the wording "·MADE
`WELL" and "WORN WELL·".
`Class 003. First use: First Use: 0 First Use In Commerce: 0
`Cleaning, polishing, scouring and abrasive preparations; preparations for per-
`sonal care, namely, hair care preparations, nail care preparations, and non-
`medicated skincare preparations; non-medicatedpreparations for application to
`or for the care of the skin, scalp, hair, body,teeth, eyes, and nails; non-
`medicated toilet preparations, namely, toilet soap and toilet water; bath and
`shower gels; shampoo; cosmetics; soaps for personal use; perfumery; essential
`oils; cosmetic goods, namely, cosmetics for the skin, hair, and body; hair lotions;
`dentifrices; lip balms; breath fresheners, namely, mouth freshening and mouth
`sprays, not for medical use; talcum powder for hygienic purposes; pre-
`moistened cosmetic wipes
`Class 009. First use: First Use: 0 First Use In Commerce: 0
`Sunglasses; spectacles; divers' masks and spectacles for underwater sports;
`skigoggles; CD holders; eyeglasses cases
`Class 014. First use: First Use: 0 First Use In Commerce: 0
`Jewellery; imitation jewellery; bracelets, necklaces and earrings; cufflinks and tie
`pins; watches and clocks
`Class 016. First use: First Use: 0 First Use In Commerce: 0
`Paper and cardboard; printed matter, namely, books, magazines, journals, bro-
`chures and catalogues in the field of fashion; cards; stationery; adhesives for
`stationery or household purposes; passport holders
`Class 018. First use: First Use: 0 First Use In Commerce: 0
`Goods made of leather and imitations ofleather, namely, bags, luggage, toiletry
`bags sold empty, rucksacks, backpacks,sports bags, beach bags, travel bags,
`handbags, shoulder bags, tote bags, wallets, purses, credit card holders made
`of leather, travel card holders made of leather; all-purpose carrying bags; lug-
`gage; toiletry bags sold empty; rucksacks; backpacks; sports bags; beach bags;
`travel bags; luggage; handbags; shoulder bags; tote bags; wallets; purses; credit
`card holders; travel card holders
`Class 025. First use: First Use: 0 First Use In Commerce: 0
`Clothing, namely, shirts, tops, shorts,blouses, pants, socks, underwear,
`
`

`

`ties,dresses, tunics, gilets, body warmers, cardigans, jumpers, pajamas, night-
`dresses, jeans, skirts, sports tops, sports pants, hooded sweatshirts, sweat-
`shirts, beachwear, swimsuits, swimming shorts, vests, jackets, coats, raincoats,
`gloves, scarves, and hosiery; headgear, namely, hats and caps; footwear; pro-
`tective clothing for water-sports, namely, bathing suits and wetsuits; leather belts
`for clothing
`Class 035. First use: First Use: 0 First Use In Commerce: 0
`The bringing together, for the benefit of others, of a variety of goods, namely,
`cleaning, polishing, scouring and abrasive preparations, preparations for person-
`al care, preparations for application to or for the care of the skin, scalp, hair,
`body, teeth, eyes and/or nails, non-medicated toilet preparations, bath
`andshower gels, shampoo, cosmetics, soaps,perfumery, essential oils, cosmetic
`goods for the skin, hair and body, hair lotions, dentifrices, cosmetic skin
`creams,lip balms, mouth freshening and mouth sprays, not for medical use,
`talcum powder for hygienic purposes, cosmetic wipes,sunglasses, spectacles,
`divers masks and spectacles for underwater sports, ski goggles, protective
`clothing for water-sports, jewellery, imitation jewellery, bracelets, necklaces and
`earrings, cufflinks and tie-pins, watches and clocks, paper, cardboard, printed
`matter, cards, stationery, adhesives for stationery or household purposes, goods
`made of leatherand/or imitations of leather, namely, bags, luggage, leather belts
`for clothing, toiletry bags, rucksacks, backpacks, sports bags, beach bags, travel
`bags, handbags, shoulder bags, tote bags, wallets, purses, credit card holders,
`travel card holders, leather gloves, leather jewellery, leather pencil cases, bags,
`luggage, leather belts, toiletry bags, rucksacks, backpacks, sports bags, beach
`bags,travel bags, luggage, handbags, shoulder bags, tote bags, wallets, purses,
`CD holders, credit card holders made of leather, travel card holders made of
`leather, passport holders, glasses cases, clothing, headgear, footwear, enabling
`customers to conveniently view and purchase those goods from a retail store, by
`mail order catalogue, or from an Internet web site; advertising services, namely,
`preparation and presentation of advertising matter; sales promotion services;
`marketing and marketing planning; advisory andconsultancy services relating to
`marketing, marketing assessment services; advertising and promotional ser-
`vices, namely, operation and supervision of customer loyalty, sales, incentives
`and promotional activity schemes and advice therefor;consultancy and informa-
`tion services inthe field of advertising, marketing, and promotion; business man-
`agement, including assistance and advising for the establishment and manage-
`ment of retail stores
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`
`4934466
`
`04/12/2016
`
`FATFACE
`
`Application Date
`
`03/18/2014
`
`Foreign Priority
`Date
`
`02/27/2014
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 003. First use: First Use: 0 First Use In Commerce: 0
`Cleaning, polishing, scouring and abrasive preparations; preparations for per-
`sonal care, namely, non-medicated skin care preparations, body wash, body lo-
`tion, body polish, and body spray; preparations for application to or for the care
`of the skin, scalp, hair, body, teeth, eyesand/or nails, namely, non-medicated
`skin care, hair care and nail care preparations, and dentifrices; non-medicated
`toiletries; bath and shower gels; shampoo; cosmetics; soaps; perfumery; essen-
`
`

`

`tial oils; cosmetic preparations for the skin,hair and body; hair lotions; denti-
`frices; lip balms; mouthwash freshening and mouthwash sprays, not for medical
`use; talcum powder for hygienic purposes; pre-moistened cosmetic wipes
`Class 009. First use: First Use: 0 First Use In Commerce: 0
`Sunglasses; spectacles; divers' masks and spectacles for underwater sports;
`skigoggles; protective clothing for water-sports, namely, diving suits, face
`masksfor diving, and protective diving shoes; CD holders; glasses cases
`Class 014. First use: First Use: 0 First Use In Commerce: 0
`jewelry; imitation jewellery; bracelets, necklaces and earrings; cufflinks and tie
`pins; watches and clocks
`Class 016. First use: First Use: 0 First Use In Commerce: 0
`Paper, cardboard, and goods made from these materials, not included in other
`classes, namely, cardboard boxes; printed matter, namely, calendars; cards,
`namely, greeting cards and blank cards; stationery; adhesives for stationery or
`household purposes; passport holders
`Class 018. First use: First Use: 0 First Use In Commerce: 0
`Goods made of leather and/or imitationsof leather, namely, leather handbags,
`leather wallets, and leather cases; luggage; toiletry bags sold empty; ruck-
`sacks;backpacks; sports bags; beach bags; travel bags; luggage; handbags;
`shoulder bags; tote bags; wallets; purses; credit card holders; wallets including
`card holders
`Class 025. First use: First Use: 0 First Use In Commerce: 0
`Clothing, namely, sweaters, skirts, dresses, scarves, gloves, mittens, shirts, slip-
`pers, boots, sneakers, shoes, jackets, coats, socks, gilets, sleepwear, swim-
`suits, underwear, jeans, pants, t-shirts, cardigans, yoga pants, yoga shirts,
`sweatshirts, and wetsuits; headgear, namely, hats; footwear; leather belts for
`clothing
`Class 035. First use: First Use: 0 First Use In Commerce: 0
`The bringing together, for the benefit of others, of a variety of goods, namely,
`cleaning, polishing, scouring and abrasive preparations, preparations for person-
`al care, preparations for application to or for the care of the skin, scalp, hair,
`body, teeth, eyes and/or nails, non-medicated toilet preparations, bath
`andshower gels, shampoo, cosmetics, soaps,perfumery, essential oils, cosmetic
`goods for the skin, hair and body, hair lotions, dentifrices, cosmetic skin
`creams,lip balms, mouth freshening and mouth sprays, not for medical use,
`talcum powder for hygienic purposes, cosmetic wipes,sunglasses, spectacles,
`divers masks and spectacles for underwater sports, ski goggles, protective
`clothing for water-sports, goods in precious metal or coatedtherewith, jewellery,
`imitation jewellery, bracelets, necklaces and earrings, cufflinks and tie-pins,
`watches and clocks, paper, cardboard and goods made from these materials,
`not included in other classes, printed matter, cards, stationery, adhesives for
`stationery or householdpurposes, goods made of leather and/or imitations of
`leather, namely, bags, luggage, leather belts, toiletry bags, rucksacks, back-
`packs, sports bags, beach bags, travel bags, luggage, handbags, shoulder
`bags, tote bags, wallets, purses, credit card holders, travel card holders, leather
`gloves, leather jewellery, leather pencil cases, bags, luggage, leather belts, toi-
`letry bags, rucksacks, backpacks, sports bags, beach bags, travel bags, lug-
`gage, handbags, shoulder bags, totebags, wallets, purses, CD holders, credit
`card holders, travel card holders, passport holders, glasses cases, cloth-
`ing,headgear, footwear, enabling customers to conveniently view and purchase
`those goods from a retail store, by mail ordercatalogue, or from an Internet web
`site; preparation and presentation of advertising matter; sales promotion ser-
`vices; marketing and marketing planning; advisory and consultancy services re-
`lating to marketing, marketing assessment services; operation and supervision
`of customer loyalty, sales, incentives and promotional activity schemes and ad-
`vice therefor;consultancy and information services relating to such services;
`
`

`

`business management, including assistance and advising for the establishment
`and management of retail stores
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`
`3055757
`
`01/31/2006
`
`FAT FACE
`
`Application Date
`
`12/15/2004
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 035. First use: First Use: 0 First Use In Commerce: 0
`Bringing together, for the benefit of others, of a variety of goods enabling cus-
`tomers to conveniently view and purchase those goods from a retail clothing
`andfashion accessory store, a sports goodsstore, by mail order catalogue, or
`froma general merchandise Internet web site
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`
`2203079
`
`11/10/1998
`
`FAT FACE
`
`Application Date
`
`08/07/1995
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 025. First use: First Use: 1991/09/00 First Use In Commerce: 1997/11/03
`
`

`

`bathrobes, coats, dresses, skirts, vests, sweaters, cardigans, shirts, sweatshirts,
`waistcoats, leggings, trousers, track pants, shorts, caps, hats, T-shirts, jackets,
`fleece tops, fleece bottoms, gloves, socks, boots, shoes, swimwear, andunder-
`wear
`
`88013561
`
`Application Date
`
`06/25/2018
`
`NONE
`
`Foreign Priority
`Date
`FATFACE SINCE 1988 MADE WELL WORN WELL UNITED KINGDOM
`
`NONE
`
`U.S. Application
`No.
`Registration Date
`
`Word Mark
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of the wording "FATFACE SINCE 1988 MADE WELL WORN
`WELL UNITEDKINGDOM" and a design of three verticalwavy bands surrounded
`by a single line circular border located between the wording "MADE WELL" and
`"WORN WELL".
`Class 025. First use: First Use: 0 First Use In Commerce: 0
`Clothing, namely, skirts, dresses, blouses, shirts, t-shirts, polo shirts, tops,
`jeans, pants, leggings, trousers, track-pants, shorts, jumpsuits, playsuits, dun-
`garees, cardigans, jackets, coats, raincoats, socks, gilets, waistcoats, ties,body
`warmers, leg warmers, beachwear, swimwear, swimsuits, bathing suits, swim
`shorts, sarongs, sleepwear, pajamas, nightdresses, underwear, vests, hosiery,
`yoga pants, yoga shirts, sports tops, sports pants, sweaters, jumpers, sweat-
`shirts, knitwear, fleece tops, polar fleece tops, fleece bottoms, scarves, gloves,
`mittens and sports clothing; protective clothing for water-sports, namely, bathing
`suits and wetsuits; headgear, namely, hats and caps; footwear, namely, slip-
`pers,boots, sneakers and shoes; leather belts
`
`U.S. Application
`No.
`Registration Date
`
`88013391
`
`NONE
`
`Word Mark
`
`FATFACE
`
`Application Date
`
`06/25/2018
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 025. First use: First Use: 0 First Use In Commerce: 0
`Clothing, namely, skirts, dresses, blouses, shirts, t-shirts, polo shirts, tops,
`jeans, pants, leggings, trousers, track-pants, shorts, jumpsuits, playsuits, dun-
`garees, cardigans, jackets, coats, raincoats, socks, gilets, waistcoats, ties,body
`warmers, leg warmers, beachwear, swimwear, swimsuits, bathing suits, swim
`shorts, sarongs, sleepwear, pajamas, nightdresses, underwear, vests, hosiery,
`yoga pants, yoga shirts, sports tops, sports pants, sweaters, jumpers, sweat-
`shirts, knitwear, fleece tops, polar fleece tops, fleece bottoms, scarves, gloves,
`mittens and sports clothing; protective clothing for water-sports, namely, bathing
`suits and wetsuits; headgear, namely, hats and caps; footwear, namely, slip-
`pers,boots, sneakers and shoes; leather belts
`
`Attachments
`
`79156095#TMSN.png( bytes )
`79151728#TMSN.png( bytes )
`79010699#TMSN.png( bytes )
`74712157#TMSN.png( bytes )
`88013561#TMSN.png( bytes )
`88013391#TMSN.png( bytes )
`Notice of Opposition Application No 87764436 FATFACE.pdf(124359 bytes )
`
`Signature
`Name
`Date
`
`/matthew homyk/
`Matthew A. Homyk
`10/09/2018
`
`

`

`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`87764436
`
`January 22, 2018
`
`FATFACE
`
`
`
`
`
`
`
`
`
`
`
`Application No.:
`
`Filed:
`
`Mark:
`
`_______________________________
`FAT FACE HOLDINGS LIMITED,
` :
` a United Kingdom limited :
` company,
`
`
`
` :
`
`
`
`
`
`
` :
`Opposer,
`
` : Serial No.: 87764436
`
`
`
`
`
` :
`v.
`
`
` : Opposition No.: ______
`
`
`
`
`
`
` :
`MY MY STAR INC.,
`
`
` :
` a California corporation, :
`
`
`
`
`
` :
`Applicant.
`
`
`
` :
`_______________________________ :
`
`
`Hon. Commissioner for Trademarks
`P.O. Box 1451
`Alexandria, Virginia 22313-1451
`
`Attn.: Trademark Trial and Appeal Board
`
`
`
`
`NOTICE OF OPPOSITION
`
`Opposer, Fat Face Holdings Limited, a United Kingdom limited
`
`company with an address at Unit 3, Ridgway, Havant, Hampshire
`
`PO91QJ, UNITED KINGDOM, believes that it would be damaged by the
`
`registration of the mark shown in Application Serial No. 87764436
`
`and hereby opposes the same under the 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:
`
`
`143998.00101/112922089v.1
`
`-1-
`
`

`

`
`
`1. Opposer is the exclusive owner of all rights, title, and
`
`interest in and to the FATFACE marks and common law rights therein,
`
`including ownership of U.S. Trademark Registration Nos. 2203079
`
`for
`
`; 3055757 for FAT FACE; 4934466 for
`
`FATFACE;
`
`and
`
`5163471
`
`for
`
`
`
`(collectively, the “FATFACE Registrations”).
`
`2. Opposer has made continuous and extensive use in the
`
`United States of the FATFACE marks, which use has developed
`
`widespread public recognition and appeal.
`
`3. Through extensive and continuous use of the FATFACE mark
`
`since at least as early as 1988 in the European Union and since at
`
`least as early as November 1997 in the United States, the FATFACE
`
`mark has acquired substantial goodwill in connection with the sales
`
`of Opposer’s goods and services.
`
`
`143998.00101/112922089v.1
`
`-2-
`
`

`

`
`
`4. Opposer's extensive marketing, promotion, and use of the
`
`FATFACE marks in the United States has caused customers and
`
`prospective purchasers to immediately associate the FATFACE marks
`
`with Opposer and to expect a wide variety of clothing, footwear,
`
`hats, handbags, jewelry, phone cases, water bottles, yoga mats,
`
`candles, preparations for personal care, non-medicated skin care,
`
`hair care, and nail care preparations, bath and shower gels, soaps,
`
`hand creams, lip balms, and related goods and services bearing the
`
`FATFACE marks to have a connection with, or association with, the
`
`same.
`
`5. On January 22, 2018, Applicant filed Application Serial
`
`No. 87764436 for registration of the mark FATFACE (hereinafter
`
`"Applicant's Mark") listing its goods as "downloadable software
`
`for electronic text, image, and video messaging” in International
`
`Class 9. Applicant’s Mark was published for opposition in the
`
`Official Gazette dated June 12, 2018.
`
`6. Applicant’s basis for filing Applicant’s Mark is intent-
`
`to-use pursuant to Section 1(b) of the Lanham Act.
`
`7. Opposer's application filing dates of the FATFACE
`
`Registrations predate the filing date for Applicant’s mark.
`
`8. Opposer's use of the FATFACE mark predates the filing
`
`date for Applicant’s mark.
`
`9. Applicant's Mark is identical in appearance, sound, and
`
`commercial impression to Opposer’s FATFACE marks, and the goods
`
`
`143998.00101/112922089v.1
`
`-3-
`
`

`

`
`are similar or related to the goods and services with which Opposer
`
`uses and maintains exclusive rights for its FATFACE marks.
`
`10. The use and registration of Applicant's Mark to identify
`
`its goods is likely to cause confusion, mistake, and deception as
`
`to the source, origin, sponsorship, or association of the goods
`
`and will injure Opposer in violation of Section 2(d) of the Lanham
`
`Act, 15 U.S.C. § 1052(d).
`
`11. Any defects, objections, or faults found with the goods
`
`sold and rendered by Applicant under Applicant's Mark, because of
`
`the false association with Opposer, would inflict upon and
`
`seriously injure the reputation of Opposer.
`
`12. 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.
`
`For the reasons set forth in the foregoing paragraphs one
`
`through twelve, Opposer believes that it would be damaged by the
`
`registration of Applicant's Mark, and thus Applicant should be
`
`denied registration of the mark.
`
`
`
`
`
`
`143998.00101/112922089v.1
`
`-4-
`
`

`

`
`
`WHEREFORE, Opposer prays that this opposition be sustained
`
`and that Application Serial No. 87764436 be refused registration.
`
`
`
`Respectfully submitted,
`
`FAT FACE HOLDINGS LIMITED
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Date: October 9, 2018 By: /matthew homyk/
`
` Matthew A. Homyk
`
` Its Attorneys
`
`BLANK ROME LLP
`One Logan Square
`Philadelphia, PA 19103
`(215) 569-5360
`
`
`143998.00101/112922089v.1
`
`-5-
`
`