ESTTA Tracking number:
`
`Filing date:
`
`ESTTA1391346
`10/23/2024
`
`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
`
`Entity
`
`Address
`
`SYMPHONY HOLDINGS LIMITED
`
`COMPANY
`
`Incorporated or
`registered in
`
`BERMUDA
`
`510 KING'S ROAD 10TH FLOOR, ISLAND PLACE TOWER
`NORTH POINT, 0
`HONG KONG
`
`Attorney informa-
`tion
`
`WILLIAM SCOTT GOLDMAN
`GOLDMAN LAW GROUP, PLLC
`1300 PENNSYLVANIA AVE., N.W.; STE. 700
`WASHINGTON, DC 20004
`UNITED STATES
`Primary email: trademarks@branding-law.com
`Secondary email(s): josephine.go@accoladeip.com
`202-880-9200
`
`Docket no.
`
`Applicant information
`
`Application no.
`
`97867755
`
`Publication date
`
`09/24/2024
`
`Opposition period
`ends
`
`10/24/2024
`
`Opposition filing
`date
`
`Applicant
`
`10/23/2024
`
`Fashion Box S.P.A.
`FRAZIONE CASELLA (TREVISO)
`VIA MARCOAI, 1
`ASOLO, 31011
`ITALY
`
`Goods/services affected by opposition
`
`Class 025. First Use: None First Use In Commerce: None
`All goods and services in the class are opposed, namely: Leggings; sports jackets; blousons; over-
`alls; T-shirts; visor caps; sweaters; shorts; denim wear, namely, denim jackets, denim pants, denim
`shirts, denim skirts; jeans; trousers; skirts; jackets as clothing; track suits; Bermuda shorts; shirts;
`beachwear; headwear; footwear
`
`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.
`
`3499197
`
`Register
`
`Principal
`
`Application date
`
`09/12/2006
`
`

`

`Registration date
`
`09/09/2008
`
`Word mark
`
`Design mark
`
`S SKINS
`
`Foreign priority
`date
`
`03/29/2006
`
`Description of
`mark
`
`Goods/services
`
`NONE
`
`Class 010. First use: First Use: None First Use In Commerce: None
`Surgical and medical garments for supporting specific muscles or groups of
`muscles, for prevention of muscle injury; for therapeutic purposes; for the control
`of vascular and/or circulatory ailments; for stabilizing injured areas of the body
`and for prevention of muscle injury, namely, compression stockings, compres-
`sion long and short pants, compression shorts including short, half, and three-
`quarter length compression shorts, compression tights, compression long and
`short leggings, compression socks, compression sleeves, compression vests,
`compression jerseys, compression long and short sleeved tops, compression
`bibs, compression underwear, therapeutic compression garments for supporting
`specific muscles or groups of muscles, therapeutic compression garments for
`prevention of muscle injury; therapeutic compression garments; elastic stockings
`for medical or therapeutic purposes; elastic supports, namely, elastic supports
`for stabilizing injured areas of the body and for prevention of muscle injury
`Class 025. First use: First Use: None First Use In Commerce: None
`Compression garments in the nature of apparel, namely, compression stockings,
`compression long and short pants, compression shorts including short, half, and
`three-quarter length compression shorts, compression tights, compression long
`and short leggings, compression socks, compression sleeves, compression
`vests, compression jerseys, compression long and short sleeved tops, compres-
`sion bibs, and compression underwear
`Class 028. First use: First Use: None First Use In Commerce: None
`[ Pads for men, women, children and babies in the nature of elbow pads for ath-
`letic use, shin pads for athletic use, knee pads for athletic use, shoulder pads for
`athletic use, hip pads for athletic use, thigh pads for athletic use, rib protectors
`for athletic use, padded hand and finger protectors for sport or athletic activity,
`padded jackets for athletic use; sports guards, namely, shin pads, knee pads,
`and elbow pads for athletic use, and chest protector pads for athletic use ]
`Class 035. First use: First Use: None First Use In Commerce: None
`[ Retail store services, wholesale store services, mail order services, on-line or-
`dering services, and distributorships, all featuring: surgical and medical gar-
`ments for supporting specific muscles or groups of muscles, for prevention of
`muscle injury; for therapeutic purposes; for the control of vascular and/or circu-
`latory ailments; for stabilizing injured areas of the body and for prevention of
`muscle injury, namely, compression stockings, compression long and short
`pants, compression shorts including short, half, and three-quarter length com-
`pression shorts, compression tights, compression long and short leggings, com-
`pression socks, compression sleeves, compression vests, compression jerseys,
`compression long and short sleeved tops, compression bibs, compression un-
`derwear, therapeutic compression garments for supporting specific muscles or
`groups of muscles, therapeutic compression garments for prevention of muscle
`injury; therapeutic compression garments; elastic stockings for medical or thera-
`peutic purposes; elastic supports, namely, elastic supports for stabilizing injured
`areas of the body and for prevention of muscle injury; compression garments in
`the nature of apparel, namely, compression stockings, compression long and
`short pants, compression shorts including short, half, and three-quarter length
`
`

`

`compression shorts, compression tights, compression long and short leggings,
`compression socks, compression sleeves, compression vests, compression jer-
`seys, compression long and short sleeved tops, compression bibs, and com-
`pression underwear; pads for men, women, children and babies in the nature of
`elbow pads for athletic use, shin pads for athletic use, knee pads for athletic
`use, shoulder pads for athletic use, hip pads for athletic use, thigh pads for ath-
`letic use, rib protectors for athletic use, padded hand and finger protectors for
`sport or athletic activity, padded jackets for athletic use; sports guards, namely,
`shin pads, knee pads, and elbow pads for athletic use, and chest protector pads
`for athletic use ]
`
`U.S. registration
`no.
`
`4588981
`
`Register
`
`Principal
`
`Registration date
`
`08/19/2014
`
`Word mark
`
`Design mark
`
`S SKINS
`
`Application date
`
`12/28/2009
`
`Foreign priority
`date
`
`NONE
`
`Description of
`mark
`
`Goods/services
`
`The mark consists of an "S" logo and the word "SKINS".
`
`Class 018. First use: First Use: Mar 1, 2014 First Use In Commerce: Mar 1,
`2014
`Bags of leather and imitation leather, namely, athletic bags, backpacks, knap-
`sacks, satchels, shoulder bags, sports bags, including all-purpose sports bags,
`duffel bags, gym bags, holdalls; and travelling bags
`Class 028. First use: First Use: Mar 1, 2014 First Use In Commerce: Mar 1,
`2014
`Bags specially adapted for sports balls, namely, lacrosse balls, soccer balls, and
`footballs; bags specially adapted for football, lacrosse and cricket sports gear
`bags, and sports bags specially adapted for cricket equipment
`
`Attachments
`
`78972753#TMSN.png( bytes )
`77901530#TMSN.png( bytes )
`Opposition97867755.pdf(75534 bytes )
`
`Signature
`
`/william scott goldman/
`
`Name
`
`Date
`
`WILLIAM SCOTT GOLDMAN
`
`10/23/2024
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`IN THE MATTER OF: Trademark Application Serial No.: 97867755
`
`
`SYMPHONY HOLDINGS LIMITED
`
`
`
`
`
`
`
`Opposition No.: ________________
`
`
`
`
`:
`:
`:
`:
`:
`:
`:
`:
`
`Opposer,
`
`
`vs.
`
`FASHION BOX S.P.A.
`
`
`
`Applicant
`
`
`
`NOTICE OF OPPOSITION
`
`
`SYMPHONY HOLDINGS LIMITED a company of Bermuda, believes that it would be
`
`damaged by registration of the mark HYPERSKIN, shown in U.S. Trademark Application
`
`Serial No. 97867755, and hereby opposes same. In support of and as grounds for Notice of
`
`Opposition, OPPOSER alleges as follows:
`
`
`
`1a. Upon information and belief, APPLICANT FASHION BOX S.P.A. is a joint stock
`
`company of Italy with a business address of Frazione Casella (Treviso), Via Marcoai, 1 Asolo
`
`31011 ITALY, as reflected in the USPTO’s records for U.S. Trademark Application No.
`
`97867755 (“APPLICANT”).
`
`
`1b. APPLICANT applied to register the designation HYPERSKIN (“APPLICANT’S MARK”)
`
`as a trademark for:
`
`IC 025. Leggings; sports jackets; blousons; overalls; T-shirts; visor caps; sweaters; shorts; denim wear,
`namely, denim jackets, denim pants, denim shirts, denim skirts; jeans; trousers; skirts; jackets as
`clothing; track suits; Bermuda shorts; shirts; beachwear; headwear; footwear
`
`
`
`1
`
`

`

`1c. On or about March 31, 2023 APPLICANT filed at the United States Patent and Trademark
`
`Office U.S. Trademark Application Serial No. 97867755, based on a foreign trademark
`
`registration date of March 3, 2016.
`
`1d. In the September 24, 2024 issue of the Patent and Trademark Office Official Gazette
`
`pertaining to trademarks and service marks, the said APPLICANT MARK was published for
`
`opposition.
`
`2a. OPPOSER is the sole owner of a registered trademark on the Principal Register for the
`
`arbitrary designation S SKINS (and Design) under U.S. Trademark Registration Nos. 3499197
`and 4588981, respectively (“OPPOSER MARKS”), both used by OPPOSER and/or under its
`
`direct supervision and control for:
`
`
`
`
`
`
`
`
`IC 025: Compression garments in the nature of apparel, namely, compression
`stockings, compression long and short pants, compression shorts including short, half,
`and three-quarter length compression shorts, compression tights, compression long and
`short leggings, compression socks, compression sleeves, compression vests,
`compression jerseys, compression long and short sleeved tops, compression bibs, and
`compression underwear.
`
`IC 010: Surgical and medical garments for supporting specific muscles or groups of
`muscles, for prevention of muscle injury; for therapeutic purposes; for the control of
`vascular and/or circulatory ailments; for stabilizing injured areas of the body and for
`prevention of muscle injury, namely, compression stockings, compression long and
`short pants, compression shorts including short, half, and three-quarter length
`compression shorts, compression tights, compression long and short leggings,
`compression socks, compression sleeves, compression vests, compression jerseys,
`compression long and short sleeved tops, compression bibs, compression underwear,
`therapeutic compression garments for supporting specific muscles or groups of
`muscles, therapeutic compression garments for prevention of muscle injury;
`therapeutic compression garments; elastic stockings for medical or therapeutic
`purposes; elastic supports, namely, elastic supports for stabilizing injured areas of the
`body and for prevention of muscle injury.
`
`IC 028: [ [ Pads for men, women, children and babies in the nature of elbow pads for
`athletic use, shin pads for athletic use, knee pads for athletic use, shoulder pads for
`athletic use, hip pads for athletic use, thigh pads for athletic use, rib protectors for
`athletic use, padded hand and finger protectors for sport or athletic activity, padded
`jackets for athletic use; sports guards, namely, shin pads, knee pads, and elbow pads
`for athletic use, and chest protector pads for athletic use ] ].
`
`
`
`2
`
`

`

`
`
`
`
`
`
`IC 035: [ [ Retail store services, wholesale store services, mail order services, on-line
`ordering services, and distributorships, all featuring: surgical and medical garments
`for supporting specific muscles or groups of muscles, for prevention of muscle injury;
`for therapeutic purposes; for the control of vascular and/or circulatory ailments; for
`stabilizing injured areas of the body and for prevention of muscle injury, namely,
`compression stockings, compression long and short pants, compression shorts
`including short, half, and three-quarter length compression shorts, compression tights,
`compression long and short leggings, compression socks, compression sleeves,
`compression vests, compression jerseys, compression long and short sleeved tops,
`compression bibs, compression underwear, therapeutic compression garments for
`supporting specific muscles or groups of muscles, therapeutic compression garments
`for prevention of muscle injury; therapeutic compression garments; elastic stockings
`for medical or therapeutic purposes; elastic supports, namely, elastic supports for
`stabilizing injured areas of the body and for prevention of muscle injury; compression
`garments in the nature of apparel, namely, compression stockings, compression long
`and short pants, compression shorts including short, half, and three-quarter length
`compression shorts, compression tights, compression long and short leggings,
`compression socks, compression sleeves, compression vests, compression jerseys,
`compression long and short sleeved tops, compression bibs, and compression
`underwear; pads for men, women, children and babies in the nature of elbow pads for
`athletic use, shin pads for athletic use, knee pads for athletic use, shoulder pads for
`athletic use, hip pads for athletic use, thigh pads for athletic use, rib protectors for
`athletic use, padded hand and finger protectors for sport or athletic activity, padded
`jackets for athletic use; sports guards, namely, shin pads, knee pads, and elbow pads
`for athletic use, and chest protector pads for athletic use ] ].
`
`IC 018: Bags of leather and imitation leather, namely, athletic bags, backpacks,
`knapsacks, satchels, shoulder bags, sports bags, including all-purpose sports bags,
`duffel bags, gym bags, holdalls; and travelling bags.
`
`IC 028: Bags specially adapted for sports balls, namely, lacrosse balls, soccer balls,
`and footballs; bags specially adapted for football, lacrosse and cricket sports gear
`bags, and sports bags specially adapted for cricket equipment.
`
` 2b. Beginning prior to March 31, 2023 and APPLICANT’s date of filing for the above-noted
`
`U.S. Trademark application Serial No. 97867755 and continuing thereafter without interruption
`
`or abandonment, OPPOSER has used, and/or supervised the use of, the said OPPOSER
`
`MARKS in commerce within the United States.
`
`2c. As a result of all such use, employment, display and other activity of and with the said
`
`OPPOSER MARKS, said OPPOSER MARKS have become distinctive of the goods of
`
`OPPOSER.
`
`
`
`3
`
`

`

`2d. As a result of all such use, employment, display and other activity of and with the said
`
`OPPOSER MARKS, OPPOSER has developed substantial valuable goodwill and commercial
`
`reputation with respect to the said OPPOSER MARKS, all of which goodwill and commercial
`
`reputation inures to the benefit of OPPOSER.
`
`3a. The said APPLICANT MARK is highly similar to the said OPPOSER MARKS in
`
`appearance, sound, connotation, and commercial impression.
`
`3b. The said OPPOSER MARKS are arbitrary and thus, accorded a very high level of
`
`deference in a likelihood of confusion analysis.
`
`3c. The said APPLICANT MARK is applied for as to goods which are closely related to the
`
`goods with which the OPPOSER uses in commerce within the United States for the said
`
`OPPOSER MARKS.
`
`3d. The said APPLICANT MARK is confusingly similar to the said OPPOSER MARKS, and
`
`for goods related thereto.
`
`4a. OPPOSER’s dates of first use in commerce of its said OPPOSER MARKS predate both
`APPLICANT’s foreign trademark registration date and APPLICANT’s filing date of its said
`
`APPLICANT MARK.
`
`4b. OPPOSER has priority in time and right as to its said OPPOSER MARKS, specifically
`priority over APPLICANT as to APPLICANT’s claim as to the said APPLICANT MARK.
`
`4c. The said OPPOSER MARKS and the said APPLICANT MARK are highly similar;
`OPPOSER’s goods and APPLICANT’s goods are closely related; the channels of trade
`
`employed by OPPOSER and APPLICANT are unrestricted. The only significant difference is
`
`that OPPOSER has claimed priority in said OPPOSER MARKS since at least as early as
`
`March 29, 2006 and March 1, 2014, respectively, based on its foreign trademark registration
`
`date of March 29, 2006 and Statement of Use first use in commerce date of March 1, 2014,
`
`respectively, which are both significantly before APPLICANT filed its application on March
`
`
`
`4
`
`

`

`31, 2023 to register the said APPLICANT MARK, based on a foreign trademark registration
`
`date of March 3, 2016.
`
`5a. If APPLICANT is permitted to use and register the said APPLICANT MARK as specified
`in the application herein opposed, any defect, objection or fault found with APPLICANT’s
`
`goods marketed under the said APPLICANT MARK would necessarily reflect upon and
`
`seriously injure the goodwill and commercial reputation which OPPOSER has established for
`
`its goods in conjunction with which the said OPPOSER MARKS are used.
`
`5b. If APPLICANT is permitted to use and register the said APPLICANT MARK as specified
`
`in the application herein opposed, confusion, mistake, and deception in trade resulting in
`
`damage and injury to OPPOSER likely would be caused.
`
`6. If APPLICANT is permitted to use and register the said APPLICANT MARK as specified
`
`in the application herein opposed, such use and registration will have a diluting effect on
`OPPOSER’S rights in the said OPPOSER MARKS. The use by APPLICANT of the said
`
`APPLICANT MARK may eventually deprive
`
`the said OPPOSER MARKS of all
`
`distinctiveness, since such use and registration will blur the ability of the said OPPOSER
`
`MARKS to serve as an identification of source, particularly given the relative strength of
`OPPOSER’s arbitrary marks.
`
`7. If APPLICANT were granted registration, APPLICANT would thereby obtain at least a
`
`prima facie exclusive right to the use of the said APPLICANT MARK. Such registration would
`
`be a source of damage and injury to OPPOSER and would wrongfully and improperly hinder
`not only OPPOSER’s present use, but also OPPOSER’s rightful future use of the said
`
`OPPOSER MARKS.
`
`8. APPLICANT is not the owner of the mark shown in U.S. Trademark Application Serial No.
`
`97867755 because OPPOSER is the sole owner of the said OPPOSER MARKS, and all
`
`variations thereof, and has granted no license, right, or title in the same to APPLICANT.
`
`Therefore, APPLICANT is not entitled to the registration or use of the said APPLICANT
`
`
`
`5
`
`

`

`MARK because OPPOSER has prior and exclusive right to the registration and the exclusive
`
`use of the said OPPOSER MARKS.
`
`
`
`WHEREFORE, OPPOSER requests that this Opposition be sustained, that U.S. Trademark
`
`Application Serial No. 97867755 be rejected, that the said APPLICANT MARK be refused
`
`registration, and that the Trademark Trial and Appeal Board grant such other and further relief
`
`as may be deemed appropriate.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`SYMPHONY HOLDINGS LIMITED
`
`
`OPPOSER
`
`By: /William Scott Goldman/
` William Scott Goldman
` GOLDMAN LAW GROUP, PLLC
` 1300 Pennsylvania Ave., NW; Ste. 700
` Washington, DC 20004
` (202) 880-9200
`
`
`
` Attorney for OPPOSER
`
`
`
`
`
`
`
`
`
`Date: October 23, 2024
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`6
`
`

`

`
`
`CERTIFICATE OF SERVICE
`
`The undersigned attorney hereby certifies that on October 23, 2024, a true and complete copy
`of OPPOSER’S NOTICE OF OPPOSITION was filed electronically with the TTAB and was
`
`served on counsel for APPLICANT by forwarding said copy on October 23, 2024, via
`
`electronic mail to:
`
`
`
`Keith A. Weltsch
`400 Garden City Plaza, Ste. 300
`Garden City, New York 11530
`
`intprop@ssmp.com
`
`
`
`Attorney for APPLICANT
`
`Fashion Box S.P.A
`
`
`
`
`
`
`
`
`
`
`
`
` /William Scott Goldman/
`WILLIAM SCOTT GOLDMAN
`GOLDMAN LAW GROUP, PLLC
`Attorney for OPPOSER
`SYMPHONY HOLDINGS LIMITED
`Date: October 23, 2024
`
`7
`
`

`

`
`
`
`
`8
`
`