Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
`ESTTA1146375
`07/13/2021
`
`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
`
`Madewell Inc.
`
`07/14/2021
`
`225 LIBERTY STREET, 17TH FLOOR
`NEW YORK, NY 10281
`UNITED STATES
`
`JOEL KARNI SCHMIDT / REEMA PANGARKAR
`COWAN, LIEBOWITZ & LATMAN, P.C.
`114 WEST 47TH STREET
`NEW YORK, NY 10036
`UNITED STATES
`Primary Email: trademark@cll.com
`Secondary Email(s): jks@cll.com, rxp@cll.com, mxc@cll.com, mel@cll.com
`(212) 790-9200
`
`Docket Number
`
`26906.100
`
`Applicant Information
`
`Application No.
`
`90187607
`
`Publication date
`
`03/16/2021
`
`Opposition Filing
`Date
`
`Applicant
`
`07/13/2021
`
`Opposition Peri-
`od Ends
`
`07/14/2021
`
`Madewell Frenchies, LLC
`128 CRYSTAL DRIVE
`LUCASVILLE, OH 45648
`UNITED STATES
`
`Goods/Services Affected by Opposition
`
`Class 044. First Use: 2019/10/30 First Use In Commerce: 2019/10/30
`All goods and services in the class are opposed, namely: Breeding services for dogs
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`Other
`
`Priority and likelihood of confusion under com-
`mon law.
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`
`968685
`
`Application Date
`
`02/24/1972
`
`
`ESTTA1146375
`07/13/2021
`
`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
`
`Madewell Inc.
`
`07/14/2021
`
`225 LIBERTY STREET, 17TH FLOOR
`NEW YORK, NY 10281
`UNITED STATES
`
`JOEL KARNI SCHMIDT / REEMA PANGARKAR
`COWAN, LIEBOWITZ & LATMAN, P.C.
`114 WEST 47TH STREET
`NEW YORK, NY 10036
`UNITED STATES
`Primary Email: trademark@cll.com
`Secondary Email(s): jks@cll.com, rxp@cll.com, mxc@cll.com, mel@cll.com
`(212) 790-9200
`
`Docket Number
`
`26906.100
`
`Applicant Information
`
`Application No.
`
`90187607
`
`Publication date
`
`03/16/2021
`
`Opposition Filing
`Date
`
`Applicant
`
`07/13/2021
`
`Opposition Peri-
`od Ends
`
`07/14/2021
`
`Madewell Frenchies, LLC
`128 CRYSTAL DRIVE
`LUCASVILLE, OH 45648
`UNITED STATES
`
`Goods/Services Affected by Opposition
`
`Class 044. First Use: 2019/10/30 First Use In Commerce: 2019/10/30
`All goods and services in the class are opposed, namely: Breeding services for dogs
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`Other
`
`Priority and likelihood of confusion under com-
`mon law.
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`
`968685
`
`Application Date
`
`02/24/1972
`
`
`
`Registration Date
`
`09/18/1973
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`MADEWELL
`
`NONE
`
`Class 025. First use: First Use: 1936/00/00 First Use In Commerce: 1936/00/00
`MEN'S, WOMEN'S AND CHILDREN'S CLOTHING-NAMELY, WORK-WEAR,
`PANTS, SLACKS, JEANS,SHIRTS AND JACKETS
`
`U.S. Registration
`No.
`
`3878162
`
`Registration Date
`
`11/16/2010
`
`Word Mark
`
`Design Mark
`
`MADEWELL
`
`Application Date
`
`10/06/2006
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 018. First use: First Use: 2008/02/01 First Use In Commerce: 2008/02/01
`Handbags, duffel bags, small leather goods, namely, purses, and bags
`Class 025. First use: First Use: 1937/00/00 First Use In Commerce: 1937/00/00
`Clothing, namely, pants, shorts, slacks, jeans, sweatpants, overalls, shirts,
`blouses, jackets, coats, trenchcoats, sweaters, vests, blazers, skirts, dresses,
`hats, t-shirts, sweatshirts, socks, scarves, belts, gloves, footwear, shoes, boots
`Class 035. First use: First Use: 2006/08/22 First Use In Commerce: 2006/08/22
`On-line and in store retail store services [ and catalog services ] in the fields of
`clothing, footwear, handbags, and jewelry
`
`U.S. Registration
`No.
`
`3957991
`
`Registration Date
`
`05/10/2011
`
`Word Mark
`
`MADEWELL
`
`Application Date
`
`10/06/2006
`
`Foreign Priority
`Date
`
`NONE
`
`
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 025. First use: First Use: 2008/04/00 First Use In Commerce: 2008/04/00
`Clothing, namely, swimwear
`
`U.S. Registration
`No.
`
`4128967
`
`Registration Date
`
`04/17/2012
`
`Word Mark
`
`Design Mark
`
`MADEWELL
`
`Application Date
`
`02/25/2008
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 2008/02/00 First Use In Commerce: 2008/02/00
`Eyewear, namely, sunglasses[ and eyeglasses]
`Class 014. First use: First Use: 2006/08/00 First Use In Commerce: 2006/08/00
`Jewelry, namely, earrings, necklaces, rings, and charms
`
`U.S. Registration
`No.
`
`4162102
`
`Registration Date
`
`06/19/2012
`
`Word Mark
`
`MADEWELL
`
`Application Date
`
`03/25/2011
`
`Foreign Priority
`Date
`
`NONE
`
`
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 016. First use: First Use: 2008/03/00 First Use In Commerce: 2008/03/00
`[ NEWSLETTERS IN THE FIELD OF FASHION, FASHION ACCESSORIES,
`BEAUTY AND LIFESTYLE ]
`Class 041. First use: First Use: 2011/08/00 First Use In Commerce: 2011/08/00
`ENTERTAINMENT SERVICES, NAMELY, PROVIDING AN ON-LINE BLOG
`AND JOURNAL IN THE FIELD OF FASHION, FASHION ACCESSORIES,
`BEAUTY AND LIFESTYLE
`
`U.S. Registration
`No.
`
`4205559
`
`Registration Date
`
`09/11/2012
`
`Word Mark
`
`Design Mark
`
`MADEWELL
`
`Application Date
`
`02/03/2012
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 2006/08/00 First Use In Commerce: 2006/08/00
`Magnetic coded gift cards
`Class 035. First use: First Use: 2006/08/00 First Use In Commerce: 2006/08/00
`Issuing gift certificates which may then be redeemed for goods or services
`
`U.S. Registration
`No.
`
`5167529
`
`Registration Date
`
`03/21/2017
`
`Word Mark
`
`MADEWELL
`
`Application Date
`
`11/16/2015
`
`Foreign Priority
`Date
`
`NONE
`
`
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 024. First use: First Use: 2014/11/30 First Use In Commerce: 2014/11/30
`BLANKETS
`
`U.S. Registration
`No.
`
`6076742
`
`Registration Date
`
`06/09/2020
`
`Word Mark
`
`Design Mark
`
`MADEWELL
`
`Application Date
`
`10/18/2018
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 003. First use: First Use: 2019/02/00 First Use In Commerce: 2019/02/00
`PERSONAL CARE PRODUCTS, NAMELY, PERFUMES, FRAGRANCES
`
`U.S. Registration
`No.
`
`6240285
`
`Registration Date
`
`01/05/2021
`
`Word Mark
`
`Design Mark
`
`MADEWELL
`
`Application Date
`
`10/18/2018
`
`Foreign Priority
`Date
`
`NONE
`
`
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 003. First use: First Use: 2020/02/00 First Use In Commerce: 2020/02/00
`SKINCARE PRODUCTS, NAMELY, NON-MEDICATED SKINCARE PREPARA-
`TIONS; BEAUTY PRODUCTS, NAMELY, CREAMS, LOTIONS; BODY
`PRODUCTS, NAMELY, LOTIONS
`Class 035. First use: First Use: 2006/08/22 First Use In Commerce: 2006/08/22
`ONLINE RETAIL STORE AND RETAIL STORE SERVICES IN THE FIELDS OF
`CLOTHING, FOOTWEAR, HANDBAGS, WATCHES, EYEWEAR, JEW-
`ELRY,BEDDING, HOME PRODUCTS, BEAUTY PRODUCTS, HAIR AC-
`CESSORIES, PERSONAL CARE PRODUCTS, COSMETICS, BATH AND
`BODY PRODUCTS, CANDLES AND CANDLE ACCESSORIES, EXCLUD-
`INGTEA, PAINTS, AND PROTECTIVE COATINGS; ONLINE RETAIL STORE
`AND RETAIL STORE SERVICES FEATURING A WIDE VARIETY OF CON-
`SUMER GOODS OF OTHERS, EXCLUDING TEA, PAINTS, AND PROTECT-
`IVE COATINGS; PROMOTING THEGOODS OF OTHERS, EXCLUDING TEA,
`PAINTS,AND PROTECTIVE COATINGS; ISSUING GIFT CERTIFICATES
`WHICH MAY THEN BE REDEEMED FOR GOODS OR SERVICES, EXCLUD-
`ING TEA, PAINTS, AND PROTECTIVE COATINGS; CUSTOMER LOYALTY
`SERVICES AND CUSTOMER CLUB SERVICES FOR COMMERCIAL, PRO-
`MOTIONAL, AND/OR ADVERTISING PURPOSES; ADMINISTRATION OF
`APROGRAM FOR ENABLING PARTICIPANTS TO OBTAIN DISCOUNTS AND
`SPECIAL OFFERS ON PRODUCTS AND SERVICES, EXCLUDING TEA,
`PAINTS, AND PROTECTIVE COATINGS
`
`U.S. Registration
`No.
`
`6364732
`
`Registration Date
`
`05/25/2021
`
`Word Mark
`
`Design Mark
`
`MADEWELL
`
`Application Date
`
`03/07/2018
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 004. First use: First Use: 2017/09/00 First Use In Commerce: 2017/09/00
`GIFT ITEMS, namely, CANDLES
`
`U.S. Registration
`No.
`
`3924264
`
`Registration Date
`
`02/22/2011
`
`Word Mark
`
`MADEWELL.COM
`
`Application Date
`
`06/21/2010
`
`Foreign Priority
`Date
`
`NONE
`
`
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 035. First use: First Use: 2010/05/27 First Use In Commerce: 2010/05/27
`Online retail store and retail store services in the fields of clothing, footwear,
`bags, sunglasses, jewelry, watches, and fashion accessories
`
`U.S. Registration
`No.
`
`4162103
`
`Registration Date
`
`06/19/2012
`
`Word Mark
`
`Design Mark
`
`MADEWELL MUSINGS
`
`Application Date
`
`03/25/2011
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 016. First use: First Use: 2008/03/00 First Use In Commerce: 2008/03/00
`[ NEWSLETTERS IN THE FIELD OF FASHION, FASHION ACCESSORIES,
`BEAUTY AND LIFESTYLE ]
`Class 041. First use: First Use: 2011/08/00 First Use In Commerce: 2011/08/00
`ENTERTAINMENT SERVICES, NAMELY, PROVIDING AN ON-LINE BLOG
`AND JOURNAL IN THE FIELD OF FASHION, FASHION ACCESSORIES,
`BEAUTY AND LIFESTYLE
`
`U.S. Registration
`No.
`
`4895377
`
`Registration Date
`
`02/02/2016
`
`Application Date
`
`06/29/2015
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`#EVERYDAYMADEWELL
`
`
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 035. First use: First Use: 2015/02/24 First Use In Commerce: 2015/02/24
`ONLINE RETAIL STORE AND RETAIL STORE SERVICES IN THE FIELDS OF
`CLOTHING, FOOTWEAR, BAGS, SUNGLASSES, JEWELRY, WATCHES,
`AND FASHION ACCESSORIES
`Class 041. First use: First Use: 2015/02/24 First Use In Commerce: 2015/02/24
`ENTERTAINMENT SERVICES, NAMELY, CONDUCTING CONTESTS
`
`U.S. Registration
`No.
`
`5197496
`
`Registration Date
`
`05/02/2017
`
`Word Mark
`
`Design Mark
`
`MADEWELL INSIDER
`
`Application Date
`
`10/19/2016
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of the mark "MADEWELL", underlined, with the term "IN-
`SIDER" underneath the underline.
`
`Class 035. First use: First Use: 2016/10/25 First Use In Commerce: 2016/10/25
`CUSTOMER LOYALTY SERVICES AND CUSTOMER CLUB SERVICES FOR
`COMMERCIAL, PROMOTIONAL, AND/OR ADVERTISING PURPOSES; BUSI-
`NESSADMINISTRATION OF CONSUMER LOYALTY PROGRAMS FOR EN-
`ABLING PARTICIPANTS TO OBTAINDISCOUNTS AND SPECIAL OFFERS
`ON PRODUCTS AND SERVICES; ONLINE RETAIL STORE AND RETAIL
`STORE SERVICES IN THE FIELDS OF CLOTHING, FOOTWEAR, BAGS,
`SUNGLASSES, JEWELRY, WATCHES, AND FASHION ACCESSORIES
`
`U.S. Registration
`No.
`
`5197448
`
`Registration Date
`
`05/02/2017
`
`Word Mark
`
`MADEWELL INSIDER
`
`Application Date
`
`08/16/2016
`
`Foreign Priority
`Date
`
`NONE
`
`
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 035. First use: First Use: 2016/10/25 First Use In Commerce: 2016/10/25
`CUSTOMER LOYALTY SERVICES AND CUSTOMER CLUB SERVICES FOR
`COMMERCIAL, PROMOTIONAL, AND/OR ADVERTISING PURPOSES; BUSI-
`NESSADMINISTRATION OF CONSUMER LOYALTY PROGRAMS FOR EN-
`ABLING PARTICIPANTS TO OBTAINDISCOUNTS AND SPECIAL OFFERS
`ON PRODUCTS AND SERVICES; ONLINE RETAIL STORE AND RETAIL
`STORE SERVICES IN THE FIELDS OF CLOTHING, FOOTWEAR, BAGS,
`SUNGLASSES, JEWELRY, WATCHES, AND FASHION ACCESSORIES
`
`U.S. Registration
`No.
`
`5215361
`
`Registration Date
`
`05/30/2017
`
`Word Mark
`
`Design Mark
`
`MADEWELL ICON
`
`Application Date
`
`08/16/2016
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 035. First use: First Use: 2016/10/25 First Use In Commerce: 2016/10/25
`CUSTOMER LOYALTY SERVICES AND CUSTOMER CLUB SERVICES FOR
`COMMERCIAL, PROMOTIONAL, AND/OR ADVERTISING PURPOSES; BUSI-
`NESSADMINISTRATION OF CONSUMER LOYALTY PROGRAMS FOR EN-
`ABLING PARTICIPANTS TO OBTAINDISCOUNTS AND SPECIAL OFFERS
`ON PRODUCTS AND SERVICES; ONLINE RETAIL STORE AND RETAIL
`STORE SERVICES IN THE FIELDS OF CLOTHING, FOOTWEAR, BAGS,
`SUNGLASSES, JEWELRY, WATCHES, AND FASHION ACCESSORIES
`
`U.S. Registration
`No.
`
`5215360
`
`Registration Date
`
`05/30/2017
`
`Word Mark
`
`MADEWELL MUSE
`
`Application Date
`
`08/16/2016
`
`Foreign Priority
`Date
`
`NONE
`
`
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 035. First use: First Use: 2016/10/25 First Use In Commerce: 2016/10/25
`CUSTOMER LOYALTY SERVICES AND CUSTOMER CLUB SERVICES FOR
`COMMERCIAL, PROMOTIONAL, AND/OR ADVERTISING PURPOSES; BUSI-
`NESSADMINISTRATION OF CONSUMER LOYALTY PROGRAMS FOR EN-
`ABLING PARTICIPANTS TO OBTAINDISCOUNTS AND SPECIAL OFFERS
`ON PRODUCTS AND SERVICES; ONLINE RETAIL STORE AND RETAIL
`STORE SERVICES IN THE FIELDS OF CLOTHING, FOOTWEAR, BAGS,
`SUNGLASSES, JEWELRY, WATCHES, AND FASHION ACCESSORIES
`
`U.S. Registration
`No.
`
`5279554
`
`Registration Date
`
`09/05/2017
`
`Word Mark
`
`Design Mark
`
`MILE(S) BY MADEWELL
`
`Application Date
`
`08/15/2016
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 025. First use: First Use: 2016/09/16 First Use In Commerce: 2016/09/16
`CLOTHING, NAMELY, TOPS, SHIRTS, TANK TOPS, SWEATSHIRTS, JACK-
`ETS, BOTTOMS, PANTS, SHORTS, LEGGINGS, SWEATPANTS, FOOT-
`WEARAND HEADGEAR, NAMELY, CAPS
`
`U.S. Registration
`No.
`
`5547589
`
`Registration Date
`
`08/21/2018
`
`Word Mark
`
`MADEWELL
`
`Application Date
`
`10/20/2016
`
`Foreign Priority
`Date
`
`NONE
`
`
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of the wording "MADEWELL" in a stylized, script font.
`
`Class 004. First use: First Use: 2017/09/00 First Use In Commerce: 2017/09/00
`Candles
`Class 009. First use: First Use: 2007/09/00 First Use In Commerce: 2007/09/00
`Eyewear, namely, sunglasses; magnetically encoded gift cards; cases for mobile
`phones
`Class 014. First use: First Use: 2011/07/00 First Use In Commerce: 2011/07/00
`Jewelry, namely, earrings, necklaces, rings, charms and bracelets
`Class 016. First use: First Use: 2015/09/00 First Use In Commerce: 2015/09/00
`Passport cases of leather
`Class 018. First use: First Use: 2013/08/00 First Use In Commerce: 2013/08/00
`Handbags, duffel bags, small leather goods, namely, purses, and bags; cases of
`leather; luggage and baggage tags
`Class 025. First use: First Use: 2006/08/00 First Use In Commerce: 2006/08/00
`Clothing, namely, pants, shorts, jeans,overalls, shirts, blouses, jackets, coats,
`sweaters, vests, blazers, skirts, dresses, hats, beanies, t-shirts, sweatshirts, pa-
`jamas, socks, tights, scarves, belts, gloves, swimwear, footwear, shoes, boots
`Class 026. First use: First Use: 2017/04/00 First Use In Commerce: 2017/04/00
`Hair accessories, namely, barrettes, claw clips, hair ties, hair bands, hair clips,
`hair elastics
`Class 035. First use: First Use: 2010/07/00 First Use In Commerce: 2010/07/00
`On-line and in store retail store services and catalog services in the fields of
`clothing, footwear, handbags, watches,eyewear, jewelry, and fashion accessor-
`ies; issuing gift certificates which may then be redeemed for goods or services;
`customer loyalty services and customer club services for commercial, promo-
`tional, and/or advertising purposes; administration of a program for enabling par-
`ticipants to obtain discounts and special offers on products and services
`
`U.S. Registration
`No.
`
`5822762
`
`Registration Date
`
`07/30/2019
`
`Word Mark
`
`Design Mark
`
`MADEWELL COMMONS
`
`Application Date
`
`04/20/2018
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`
`NONE
`
`
`
`Mark
`
`Goods/Services
`
`Class 035. First use: First Use: 2018/08/31 First Use In Commerce: 2018/08/31
`ONLINE RETAIL STORE AND RETAIL STORE SERVICES IN THE FIELDS OF
`CLOTHING, FOOTWEAR, HANDBAGS, EYEWEAR, JEWELRY, HOME
`PRODUCTS, BEAUTY PRODUCTS AND COSMETICS, AND ACCESSORIES
`
`U.S. Registration
`No.
`
`6076741
`
`Registration Date
`
`06/09/2020
`
`Word Mark
`
`Design Mark
`
`MADEWELL
`
`Application Date
`
`10/18/2018
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of the term "MADEWELL" in stylized font.
`
`Class 003. First use: First Use: 2019/02/00 First Use In Commerce: 2019/02/00
`PERSONAL CARE PRODUCTS, NAMELY, PERFUMES, FRAGRANCES
`
`U.S. Registration
`No.
`
`6240286
`
`Registration Date
`
`01/05/2021
`
`Word Mark
`
`Design Mark
`
`MADEWELL
`
`Application Date
`
`10/18/2018
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of the term "MADEWELL" in stylized font.
`
`Class 003. First use: First Use: 2020/02/00 First Use In Commerce: 2020/02/00
`SKINCARE PRODUCTS, namely, NON-MEDICATED SKINCARE PREPARA-
`TIONS; BEAUTY PRODUCTS, namely, CREAMS, LOTIONS; BODY
`PRODUCTS, namely, LOTIONS
`Class 035. First use: First Use: 2010/07/00 First Use In Commerce: 2010/07/00
`ONLINE RETAIL STORE AND RETAIL STORE SERVICES IN THE FIELDS OF
`CLOTHING, FOOTWEAR, HANDBAGS, WATCHES, EYEWEAR, JEW-
`ELRY,BEDDING, HOME PRODUCTS, BEAUTY PRODUCTS, HAIR AC-
`CESSORIES, PERSONAL CARE PRODUCTS, COSMETICS, BATH AND
`BODY PRODUCTS, CANDLES AND CANDLE ACCESSORIES, EXCLUD-
`INGTEA, PAINTS, AND PROTECTIVE COATINGS; ONLINE RETAIL STORE
`AND RETAIL STORE SERVICES FEATURING A WIDE VARIETY OF CON-
`SUMER GOODS OF OTHERS, EXCLUDING TEA, PAINTS, AND PROTECT-
`
`
`
`IVE COATINGS; PROMOTING THEGOODS OF OTHERS, EXCLUDING TEA,
`PAINTS,AND PROTECTIVE COATINGS; ISSUING GIFT CERTIFICATES
`WHICH MAY THEN BE REDEEMED FOR GOODS OR SERVICES, EXCLUD-
`ING TEA, PAINTS, AND PROTECTIVE COATINGS; CUSTOMER LOYALTY
`SERVICES AND CUSTOMER CLUB SERVICES FOR COMMERCIAL, PRO-
`MOTIONAL, AND/OR ADVERTISING PURPOSES; ADMINISTRATION OF
`APROGRAM FOR ENABLING PARTICIPANTS TO OBTAIN DISCOUNTS AND
`SPECIAL OFFERS ON PRODUCTS AND SERVICES, EXCLUDING TEA,
`PAINTS, AND PROTECTIVE COATINGS
`
`U.S. Registration
`No.
`
`6289576
`
`Registration Date
`
`03/09/2021
`
`Word Mark
`
`Design Mark
`
`MADEWELL
`
`Application Date
`
`10/20/2016
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of the wording "MADEWELL" in a stylized, script font.
`
`Class 009. First use: First Use: 2007/09/00 First Use In Commerce: 2007/09/00
`eyeglasses
`Class 026. First use: First Use: 2018/00/00 First Use In Commerce: 2018/00/00
`bobby pins
`
`U.S. Application/ Registra-
`tion No.
`
`Registration Date
`
`Word Mark
`
`Goods/Services
`
`Application Date
`
`NONE
`
`NONE
`
`NONE
`
`MADEWELL
`
`clothing items and accessories, eyewear, jewelry, bags, purses, per-
`sonal care products, newsletters, catalogs and other printed matter,
`as well as the provision of retail store and online store services and
`entertainment services in the nature of an on-line blog and journal in
`the field of fashion, fashion accessories and lifestyle
`
`Attachments
`
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`87823960#TMSN.png( bytes )
`85067521#TMSN.png( bytes )
`85276791#TMSN.png( bytes )
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`87140224#TMSN.png( bytes )
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`
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`87140210#TMSN.png( bytes )
`87138665#TMSN.png( bytes )
`87977870#TMSN.png( bytes )
`87886951#TMSN.png( bytes )
`88977461#TMSN.png( bytes )
`88160883#TMSN.png( bytes )
`87210230#TMSN.png( bytes )
`NOO Madewell Frenchies.pdf(257733 bytes )
`
`Signature
`
`/Reema Pangarkar/
`
`Name
`
`Date
`
`REEMA PANGARKAR
`
`07/13/2021
`
`
`
`Cowan, Liebowitz & Latman, P.C.
`114 West 47th Street
`New York, NY 10036
`(cid:507)(cid:344)(cid:343)(cid:344)(cid:508) (cid:349)9(cid:342)-9(cid:344)(cid:342)(cid:342) Tel
`(cid:507)(cid:344)(cid:343)(cid:344)(cid:508) (cid:347)(cid:349)(cid:347)-(cid:342)(cid:348)(cid:349)(cid:343) Fax
`www.cll.com
`
`
`
`By Electronic Filing
`
`Commissioner for Trademarks
`Attn: TTAB
`P.O. Box 1451
`Alexandria, VA 22313-1451
`
`July 13, 2021
`
`Re: Madewell Inc.
`
`Notice of Opposition Against
`
`Madewell Frenchies, LLC
`
`Application to register
`
`MADEWELL FRENCHIES
`
`Ref. No. 26906.305
`
`
`
`Dear Commissioner:
`
`We enclose a Notice of Opposition against Application Serial Number 90/187,607
`published in the Official Gazette on Mar. 16, 2021. Contemporaneously with the electronic
`filing of this Notice of Opposition, we are arranging for an electronic payment in the amount of
`$600 to cover the filing fee.
`
`If the amount received is insufficient and additional fees are required, please charge our
`Deposit Account No. 03-3415.
`
`Please address all future correspondence to the attention of Joel Karni Schmidt of Cowan,
`Liebowitz & Latman, P.C.
`
`Respectfully submitted,
`
`
`
`
`
`/ Reema Pangarkar /
`Reema Pangarkar
`
`
`
`
`Enclosures
`
`cc: Joel Karni Schmidt, Esq. (w/encs.)
` Maryann E. Licciardi, Esq. (w/encs.)
`
`
`
`
`Docket No. 26906.305
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`In re Application Serial No. 90187607
`Filed: Sep. 17, 2020
`For Mark: MADEWELL FRENCHIES
`Published in the Official Gazette: Mar. 16, 2021
`
` -
`
`
`
`Opposition No.
`
`
`NOTICE OF OPPOSITION
`
` Opposer,
`
`v.
`
`MADEWELL FRENCHIES, LLC,
`
`
`Applicant.
`
` - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - X
`:
`MADEWELL INC.,
`
`:
`:
`:
`:
`:
`:
`:
`:
`:
`:
`:
`- -- -- -- -- -- -- -- -- -- -- -- -- -- -- -- -- -- -- -- -- -- -- -- X
`
`Commissioner for Trademarks
`Attn: Trademark Trial and Appeal Board
`P.O. Box 1451
`Alexandria, VA 22313-1451
`
`
`
`Opposer, Madewell Inc., a Delaware corporation with offices at 225 Liberty Street, 17th
`
`Floor, New York, New York 10281 (“Opposer”), believes that it will be damaged by registration
`
`of the standard character word mark MADEWELL FRENCHIES (“Applicant’s Mark”) for
`
`“breeding services for dogs” in International Class 44, as shown in Application Serial No.
`
`90187607 (the “Application”) and, having been granted an extension of time to oppose up to and
`
`including July 14, 2021, hereby opposes the same.
`
`As grounds for opposition, it is alleged that:
`
`1.
`
`For many years and since long prior to October 30, 2019, Applicant’s claimed
`
`first use date, Opposer Madewell Inc. and its affiliates and their predecessors (referred to
`
`as “Opposer”) have engaged throughout the United States in the sale and marketing of a wide
`
`
`
`1
`
`
`
`Docket No. 26906.305
`
`
`
`variety of clothing items and accessories, eyewear, jewelry, bags, purses, personal care products,
`
`newsletters, catalogs and other printed matter, as well as the provision of retail store and online
`
`store services, and entertainment services in the nature of an on-line blog and journal in the field
`
`of fashion, fashion accessories and lifestyle. Additionally, Opposer is currently providing retail
`
`store services featuring a wide variety of pet products.
`
`2.
`
`For many years and since long prior to October 30, 2019, Applicant’s claimed
`
`first use date, Opposer has used names and/or marks comprising or containing the words
`
`MADEWELL (“Opposer’s Marks”) in connection with its various goods and services.
`
`3.
`
`Opposer is the owner of the following federal registrations for Opposer’s Marks:
`
`Mark
`MADEWELL
`
`Reg. No.
`0968685
`
`Reg. Date
`September 18,
`1973
`
`MADEWELL
`
`3878162
`
`November 16,
`2010
`
`Goods/Services
`Men’s, Women’s and Children’s
`clothing, namely, work-wear, pants,
`slacks, jeans, shirts and jackets
`
`Handbags, duffel bags, small leather
`goods, namely, purses, and bags
`
`Clothing, namely, pants, shorts,
`slacks, jeans, sweatpants, overalls,
`shirts, blouses, jackets, coats,
`trenchcoats, sweaters, vests, blazers,
`skirts, dresses, hats, t-shirts,
`sweatshirts, socks, scarves, belts,
`gloves, footwear, shoes, boots
`
`On-line and in store retail store
`services and catalog services in the
`fields of clothing, footwear, handbags,
`and jewelry
`
`Clothing, namely, swimwear
`
`MADEWELL
`
`MADEWELL
`
`3957991
`
`4128967
`
`MADEWELL
`
`4162102
`
`May 10, 2011
`
`April 17, 2012 Eyewear, namely, sunglasses and
`eyeglasses
`
`Jewelry, namely, earrings, necklaces,
`rings, and charms
`June 19, 2012 Newsletters in the field of fashion,
`fashion accessories, beauty and
`lifestyle
`
`
`
`2
`
`
`
`Docket No. 26906.305
`
`
`
`Mark
`
`Reg. No.
`
`Reg. Date
`
`Goods/Services
`
`
`Entertainment services, namely,
`providing an on-line blog and journal
`in the field of fashion, fashion
`accessories, beauty and lifestyle
`
`Magnetic coded gift cards
`
`Issuing gift certificates which may
`then be redeemed for goods or
`services
`
`Textiles and textile goods, not
`included in other classes; bed covers;
`table covers; bath linens; towels; bed
`linens; blankets; pillows
`
`Personal care products, namely,
`perfumes fragrances
`Personal care products, namely,
`perfumes, fragrances, cosmetics, and
`make-up; skincare products, namely,
`non-medicated skincare preparations;
`beauty products, namely, creams,
`lotions, gels, masks, and non-
`medicated beauty soaps; bath
`products, namely, non-medicated bath
`preparations; body
`products, namely, body creams,
`lotions, oils, and masks; hair care
`products, namely, non-medicated hair
`care preparations
`
`Online retail store and retail store
`services in the fields of clothing,
`footwear, handbags, watches,
`eyewear, jewelry, furniture, bedding,
`home
`products, beauty products, hair
`accessories, personal care products,
`cosmetics, bath and body products,
`candles and candle accessories,
`excluding
`tea, paints, and protective coatings;
`online retail store and retail store
`services featuring a wide variety of
`consumer goods of others, excluding
`tea,
`paints, and protective coatings;
`
`MADEWELL
`
`4205559
`
`September 11,
`2012
`
`MADEWELL
`
`5167529
`
`November 16,
`2015
`
`
`
`MADEWELL
`
`6076742
`
`June 9, 2020
`
`MADEWELL
`
`6240285
`
`January 5,
`2021
`
`
`
`3
`
`
`
`Docket No. 26906.305
`
`
`
`Mark
`
`Reg. No.
`
`MADEWELL
`
`MADEWELL.COM
`
`6364732
`
`3924264
`
`MADEWELL
`MUSINGS
`
`4162103
`
`#EVERYDAYMADEWELL 4895377
`
`MADEWELL INSIDER
`
`5197448
`
`Reg. Date
`
`Goods/Services
`promoting the goods of others,
`excluding tea, paints, and protective
`coatings; issuing gift certificates
`which may then
`be redeemed for goods or services,
`excluding tea, paints, and protective
`coatings; customer loyalty services
`and customer club services for
`commercial, promotional, and/or
`advertising purposes; administration
`of a program for enabling participants
`to obtain discounts and special offers
`on
`products and services, excluding tea,
`paints, and protective coatings
`
`May 25, 2021 Gift items, namely, candles
`
`February 22,
`2011
`
`Online retail store and retail store
`services in the fields of clothing,
`footwear, bags, sunglasses, jewelry,
`watches, and fashion accessories
`
`June 19, 2012 Newsletters in the field of fashion,
`fashion accessories, beauty and
`lifestyle
`
`Entertainment services, namely,
`providing an on-line blog and journal
`in the field of fashion, fashion
`accessories, beauty and lifestyle
`
`Online retail store and retail store
`services in the fields of clothing,
`footwear, bags, sunglasses, jewelry,
`watches, and fashion accessories
`
`Entertainment services, namely,
`conducting contests
`
`Customer loyalty services and
`customer club services for
`commercial, promotional, and/or
`advertising purposes; business
`administration of
`consumer loyalty programs for
`enabling participants to obtain
`discounts and special offers on
`products and services; online retail
`
`November 17,
`2015
`
`May 2, 2017
`
`
`
`4
`
`
`
`Docket No. 26906.305
`
`
`
`Mark
`
`Reg. No.
`
`5197496
`
`
`
`MADEWELL ICON
`
`5215361
`
`MADEWELL MUSE
`
`5215360
`
`MILE(S) BY MADEWELL
`
`5279554
`
`Reg. Date
`
`May 2, 2017
`
`Goods/Services
`store and retail
`store services in the fields of clothing,
`footwear, bags, sunglasses, jewelry,
`watches, and fashion accessories
`
`Customer loyalty services and
`customer club services for
`commercial, promotional, and/or
`advertising purposes; business
`administration of
`consumer loyalty programs for
`enabling participants to obtain
`discounts and special offers on
`products and services; online retail
`store and retail
`store services in the fields of clothing,
`footwear, bags, sunglasses, jewelry,
`watches, and fashion accessories
`May 30, 2017 Customer loyalty services and
`customer club services for
`commercial, promotional, and/or
`advertising purposes; business
`administration of
`consumer loyalty programs for
`enabling participants to obtain
`discounts and special offers on
`products and services; online retail
`store and retail
`store services in the fields of clothing,
`footwear, bags, sunglasses, jewelry,
`watches, and fashion accessories
`
`May 30, 2017 Customer loyalty services and
`customer club services for
`commercial, promotional, and/or
`advertising purposes; business
`administration of
`consumer loyalty programs for
`enabling participants to obtain
`discounts and special offers on
`products and services; online retail
`store and retail
`store services in the fields of clothing,
`footwear, bags, sunglasses, jewelry,
`watches, and fashion accessories
`
`Clothing, namely, tops, shirts, tank
`tops, sweatshirts, jackets, bottoms,
`pants, shorts, leggings, sweatpants,
`
`September 5,
`2017
`
`
`
`5
`
`
`
`Docket No. 26906.305
`
`
`
`Mark
`
`Reg. No.
`
`
`
`5547589
`
`
`
`MADEWELL COMMONS
`
`5822762
`
`Reg. Date
`
`August 21,
`2018
`
`Goods/Services
`footwear and headgear, namely, caps
`
`Candles
`
`Eyewear, namely, sunglasses;
`magnetically encoded gift cards; cases
`for mobile phones
`
`Jewelry, namely, earrings, necklaces,
`rings, charms and bracelets
`
`Passport cases of leather
`
`Handbags, duffel bags, small leather
`goods, namely, purses, and bags;
`cases of leather; luggage and baggage
`tags
`
`Clothing, namely, pants, shorts, jeans,
`overalls, shirts, blouses, jackets, coats,
`sweaters, vests, blazers, skirts,
`dresses, hats, beanies, t-shirts,
`sweatshirts, pajamas, socks, tights,
`scarves, belts, gloves, swimwear,
`footwear, shoes, boots
`
`Hair accessories, namely, barrettes,
`claw clips, hair ties, hair bands, hair
`clips, hair elastics
`
`On-line and in store retail store
`services and catalog services in the
`fields of clothing, footwear, handbags,
`watches, eyewear, jewelry, and
`fashion accessories; issuing gift
`certificates which may then be
`redeemed for goods or services;
`customer loyalty services and
`customer club
`services for commercial, promotional,
`and/or advertising purposes;
`administration of a program for
`enabling participants to obtain
`discounts and
`special offers on products and services
`
`July 30, 2019 Online retail store and retail store
`services in the fields of clothing,
`footwear, handbags, eyewear, jewelry,
`home products, beauty products and
`
`
`
`6
`
`
`
`Docket No. 26906.305
`
`
`
`Mark
`
`Reg. No.
`
`Reg. Date
`
`6076741
`
`June 9, 2020
`
`Goods/Services
`cosmetics, and accessories
`
`Personal care products, namely,
`perfumes, fragrances
`
`
`
`
`
`6240286
`
`January 5,
`2021
`
`7
`
`Personal care products, namely,
`cosmetics, and make-up; skincare
`products, namely, non-medicated
`skincare preparations; beauty
`products, namely, creams, lotions,
`gels, masks, and non-medicated
`beauty soaps; bath products, namely,
`non-medicated bath preparations;
`body products, namely, body creams,
`lotions, oils, and masks; hair care
`products, namely, non-medicated hair
`care preparations
`
`Online retail store and retail store
`services in the fields of clothing,
`footwear, handbags, watches,
`eyewear, jewelry, furniture, bedding,
`home products, beauty products, hair
`accessories, personal care products,
`cosmetics, bath and body products,
`candles and candle accessories,
`excluding tea, paints, and protective
`coatings; online retail store and retail
`store services featuring a wide variety
`of consumer goods of others,
`excluding tea, paints, and protective
`coatings; promoting the goods of
`others, excluding tea, paints, and
`protective coatings; issuing gift
`certificates which may then be
`redeemed for goods or services,
`excluding tea, paints, and protective
`coatings; customer loyalty services
`and customer club services for
`commercial, promotional, and/or
`advertising purposes; administration
`of a program for enabling participants
`to obtain discounts and special offers
`on products and services, excluding
`tea, paints, and protective coatings
`
`
`
`
`
`
`
`
`
`
`
`
`
`Docket No. 26906.305
`
`Mark
`
`Reg. No.
`6289576
`
`Reg. Date
`March 9, 2021
`
`
`
`
`
`
`
`
`
`Goods/Services
`
`eyeglasses
`
`bobby pins
`
`Registration Nos. 0968685, 3878162, 3924264, 3957991, 4128967, 4162102, 4162103 and
`
`4205559 are incontestable.
`
`4.
`
`Commencing long prior to October 30, 2019, Applicant’s claimed first use date,
`
`Opposer has extensively advertised and otherwise promoted the sale of its goods and services
`
`bearing or offered in connection with Opposer’s Marks and has sold such goods and rendered
`
`such services in interstate commerce.
`
`5.
`
`As a result of the sales and promotion of its goods and services bearing or offered
`
`in connection with the Opposer’s Marks, Opposer has built up highly valuable goodwill in
`
`Opposer’s Marks, and said goodwill has become closely and uniquely identified and associated
`
`with Opposer.
`
`6.
`
`On September 17, 2020, Applicant filed the Application in the United States
`
`Patent and Trademark Office for registration on the Principal Register of Applicant’s Mark,
`
`claiming a first use date of October 30, 2019.
`
`7.
`
`Upon information and belief, Applicant made no use in United States commerce
`
`of Applicant’s Mark in connection with the applied-for services prior to its claimed first use date
`
`of October 30, 2019.
`
`8.
`
`The services covered by the Application are closely related to the goods and
`
`services in connection with which Opposer has used Opposer’s Marks.
`
`9.
`
`Applicant’s Mark contains the exact same word “MADEWELL” as in Opposer’s
`
`MADEWELL Marks
`
`
`
`8
`
`
`
`Docket No. 26906.305
`
`
`
`10.
`
`The additional word “FRENCHIES” in Applicant’s Mark is disclaimed as merely
`
`descriptive in the Application because, upon information and belief, it is a name or nickname for
`
`a breed of dog.
`
`11.
`
`Applicant’s Mark could be understood to refer to pet goods or services offered or
`
`sold by Opposer under Opposer’s Marks for the “Frenchie” breed of dog, including because
`
`Opposer’s Marks are used in connection with the sale and marketin
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