Tommy Hilfiger v. Jumbo Bright - Complaint

Case 1:13-cv-06386-NRB Document 1 Filed 09/11/13 Page 1 of 13
JUDGE
MANATT, PHELPS & PHILLIPS, LLP
Darren W. Saunders
7 Times Square
New York, New York 10036
(212) 790-4500 telephone
(212) 790-4545 fax
DSaunders@manatt.com
Attorneys for Plaintiffs
Tommy Hilfiger U.S.A., Inc. and
Tommy HilfigerLicensing LLC
UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
TOMMY HILFIGER U.S.A., INC. and
TOMMY HILFIGER LICENSING LLC,
13
t:?: Q
; __ p t._j/'
6
Civil Action No.
Plaintiffs,
--------
v.
JUMBO BRIGHT TRADING LIMITED,
Defendant.
COMPLAINT FOR DECLARATORY JUDGMENT
Plaintiffs Tommy Hilfiger U.S.A., Inc. ("Tommy Hilfiger U.S.A.") and Tommy Hilfiger
Licensing-LLC ("Tommy Hilfiger Licensing") (collectively, "Plaintiffs"), by and through their
attorneys, Manatt, Phelps & Phillips, LLP, for their complaint against Jumbo Bright Trading
Limited ("Defendant") allege as follows:
NATURE OF ACTION AND RELIEF SOUGHT
1. This is an action under the Declaratory Judgment Act, 28 U.S.C. 2201, et
for a declaration that a vertical stripe pattern, which Defendant uses on the inside lining of
footwear and claims is a common law trademark, does not function as a trademark because it is
merely ornamental and lacks secondary meaning, and further, that Plaintiffs' use of a vertical
202147273.1

stripe pattern on the inside lining of TOMMY HILFIGER footwear is not likely to cause
confusion and does not infringe Defendant's claimed trademark.
2. This action arises out of Defendant's repeated demands that Plaintiffs cease and
desist from using a vertical stripe pattern on the interior lining of TOMMY HILFIGER footwear.
PARTIES
3. Tommy Hilfiger U.S.A., Inc. is a Delaware corporation with a principal place of
business at 601 West 26th Street, New York, New York 10001.
4. Tommy Hilfiger Licensing LLC is a Delaware limited liability company with a
principal place ofbusiness at 601 West 26th Street, New York, New York 10001.
5. Upon information and belief, Defendant Jumbo Bright Trading Limited is a
corporation organized and existing under the laws of Hong Kong, with a principal place of
business at 161-167 Des Voeux Road, Hong Trade Center, 7/f, Central, Hong Kong.
JURISDICTION AND VENUE
6. This Court has subject matter jurisdiction pursuant to 28 U.S.C. 1331, 1338.
The claims alleged in this Complaint arise under the Declaratory Judgment Act, 28 U.S.C.
2201, and the Lanham Act, 15 U.S.C. 1051, et seq.
7. This Court has personal jurisdiction over Defendant because, upon information
and belief, Defendant has established minimum contacts with this forum and further, Defendant
has substantial, continuous, and systemic contacts with the State ofNew York. Upon
information and belief, Defendant sells its footwear products through retailers located in the
State of New York. By virtue of these actions, Defendant has purposefully availed itself of the
privilege of conducting business in this State and in this judicial District.
202147273.1
2

8. Venue is proper in this District under 28 U.S.C. 1391(b) and (c) because, upon
information and belief, a substantial part of the events giving rise to Plaintiffs' claims occurred in
this District and because the Defendant is subject to personal jurisdiction in this District.
9. An actual case or controversy exists between the parties. Defendant has
repeatedly threatened to take action against Plaintiffs, has asserted that Plaintiffs are engaging in
acts of trademark infringement, and has demanded that Plaintiffs immediately cease and desist
from using the pattern in issue -- a vertical stripe pattern on the interior lining of footwear
products.
GENERAL ALLEGATIONS
10. PlaintiffTommy Hilfiger U.S.A. and its predecessors have for many years, and
well before Defendant's claimed first use of a vertical stripe pattern on footwear products, used a
vertical stripe pattern on TOMMY HILFIGER footwear, attire and accessory products, and in
particular, on the interior of those products.
11. The TOMMY HILFIGER stripe pattern is typically a blue and white alternating
vertical stripe pattern, but is also used in other colors. This pattern has come to be known as, and
is referred to by Plaintiffs and the trade as the TOMMY HILFIGER "Ithaca Stripe." Attached
hereto as Exhibit A are true and correct photographs of several examples of TOMMY
HILFIGER products bearing the Ithaca stripe.
12. Upon information and belief, Defendant distributes footwear under the brand
name CHARLES PHILIP.
13. Defendant claims to own common law trademark rights to a vertical stripe pattern
used on the interior lining of its footwear, along with three vertical stripes on the shoe rim near
202147273.1
3


the heel. Attached as Exhibit B is a true and correct image of one of Defendant's shoes showing
the claimed vertical stripe pattern.
14. On April19, 2012, Defendant filed two trademark applications in the U.S. Patent
and Trademark Office ("USPTO") for a "vertical stripe pattern on the inside lining of the shoe"
with "a three vertical stripe design on the shoe rim near the heel area." In the applications,
Defendant claims a date of first use of the pattern of July 8, 2010. Attached as Exhibit Care
true and correct copies of the trademark applications.
15. On August 13, 2012, the USPTO issued an Office Action in which it refused
registration of the applied-for marks on grounds, inter alia, that the claimed pattern is not
inherently the applicant has not demonstrated sufficient proof of acquired
distinctiveness, and the claimed mark "is merely a decorative or ornamental feature of the goods
... and does not function as a trademark to identify and distinguish applicant's goods from those
of others and to indicate the source of applicant's goods." Attached as Exhibit Dis a true and
correct copy of the August 13, 2012 Office Action.
16. On December 28, 2012, Defendant presented arguments and evidence to the
USPTO in an attempt to overcome the USPTO's refusals, and in particular in an attempt to prove
acquired distinctiveness.
17. On February 15, 2013, the USPTO issued another Office Action in which it
maintained its refusal to register the claimed mark for failure to prove acquired distinctiveness
and failure of the applied-for patterns to function as a trademark. The USPTO stated, inter alia,
that Defendant has not shown that its mark has become distinctive of the goods by reason of
substantially exclusive and continuous use in commerce. Attached as Exhibit E is a true and
correct copy ofthe February 15,2013 Office Action.
202147273.1
4


18. Defendant's response to the second Office Action was due by August 15,2013.
As of today' s date, the public electronic records of the USPTO do not reflect that a response has
been filed.
19. TOMMY HILFIGER has used its Ithaca Stripe pattern on the interior lining of its
footwear products since well before the Defendant's claimed date of first use of its stripe pattern
of July 8, 2010. By way of example, attached as Exhibit F is a true and correct image of
TOMMY HILFIGER shoes from the Women's Spring 2007 collection.
20. As part of the Spring 2013 TOMMY HILFIGER women's footwear collection,
various styles of women's footwear which contained the Ithaca Stripe on the interior lining of the
shoes were sold, and continue to be sold, by retailers in the United States. Attached hereto as
Exhibit G is a true and correct photograph of TOMMY HILFIGER women's footwear from the
Spring 2013 collection showing the Ithaca Stripe on the interior lining.
21. In a letter dated March 25, 2013, outside counsel for Defendant wrote to Plaintiffs
and claimed that Defendant owns common law trademark rights to the vertical stripe pattern used
on the interior lining for its shoes, and further claimed that Plaintiffs' use of a vertical stripe
pattern on the interior lining of TOMMY HILFIGER shoes infringes its common law trademark
rights. Counsel demanded that Plaintiffs "immediately cease and desist" from using
"confusingly similar designs" on any TOMMY HILFIGER footwear products. Attached hereto
as Exhibit His a true and correct copy of Defendant's March 25, 2013 letter.
22. By letter dated April22, 2013, counsel for a licensee ofplaintiffTommy Hilfiger
Licensing ("Licensee") responded on behalf of Plaintiffs and explained the reasons why
Defendant's vertical stripe pattern does not function as a trademark, and further, even if it did,
202147273.1
5


why there is no likelihood of confusion between the parties' respective products. Attached
hereto as Exhibit I is a true and correct copy of Plaintiffs letter dated April 22, 2013.

23. Defendant's counsel sent a second letter dated May 10, 2013 in which Defendant
continued to assert ownership of common law trademark rights in the vertical stripe pattern and
continued to demand that Plaintiffs cease manufacturing, selling and advertising footwear
products containing a vertical stripe pattern on the interior lining. Attached as Exhibit J is a true
and correct copy of Defendant's letter dated May 10, 2013.
24. Plaintiffs, through counsel for the Licensee, responded on June 12, 2013 and
further explained the reasons why it believes that Defendant does not possess common law
trademark rights in the vertical stripe pattern and making clear that Plaintiffs will not agree to
discontinue manufacturing, selling or advertising the subject TOMMY HILFIGER footwear.
Attached as Exhibit K is a true and correct copy of Plaintiffs letter dated June 13, 2013.
25. Defendant sent a third letter dated July 16, 2013 in which Defendant again
asserted trademark rights in the vertical stripe pattern and continued to demand that Plaintiffs
immediately discontinue selling the subject TOMMY HILFIGER footwear. Defendant stated
that it has litigated over its claimed mark in the past and "will need to evaluate all legal remedies
available to it" in the event that Plaintiffs wish to continue using a vertical stripe pattern.
Attached hereto as Exhibit Lis a true and correct copy of Defendant's July 16, 2013 letter.
26. Plaintiffs are entitled to use a vertical stripe pattern on the interior lining of
footwear products; and in view of Defendant's threats and allegations, Plaintiffs are in need of,
and are entitled to, a judicial declaration that: (a) Defendant's vertical stripe pattern does not
function as an indicator of source and therefore Defendant does not own any common law
trademark rights in this pattern; and (b) to the extent that the Defendant's vertical stripe pattern
202147273.1
6


does function as a common law trademark, there is no likelihood of confusion between the
TOMMY HILFIGER footwear bearing a vertical stripe pattern used on the interior lining of the
footwear on the one hand, and Defendant or its footwear, on the other.
27. Defendant's repeated demands that Plaintiffs cease and desist from using the
vertical stripe pattern in issue has created a reasonable apprehension of litigation, and
accordingly, there exists an actual case or controversy.
FIRST CLAIM FOR RELIEF
(Declaratory Judgment of Failure of Stripe Design to Function as Trademark-
Merely Ornamental)
28. Plaintiffs repeat and reallege the allegations contained in paragraphs 1 to 27 of
this Complaint as if fully set forth herein.
on the inside lining of footwear shoe with three vertical stripes on the shoe rim near the heel
area.
30. Defendant's claimed trademark is a simple design consisting of vertical stripes
which is merely ornamental, and is a decorative feature ofthe footwear products on which the
pattern is used.
31. The use of a vertical stripe pattern on the lining and on the heel of a footwear
product fails to function as a trademark because it fails to identify or distinguish Defendant's
goods from those of any other footwear company.
32. Defendant's claim of exclusive rights to its supposed mark is contrary to the
Lanham Act, 15 U.S. C. 1051, et seq., and further outside of the scope of any cognizable claim
of rights Defendant may have under the Lanham Act.
202147273.1
7


33. Notwithstanding, Defendant claims that Plaintiffs' use of a vertical stripe pattern
in the lining of any footwear products constitutes trademark infringement, false designation of
origin, and unfair competition, and, under threat of litigation, demands that Plaintiffs cease use of
their stripe pattern as a lining for footwear products in commerce.
34. An actual, present and justiciable controversy exists between Plaintiffs and
Defendant concerning the right to sell Plaintiffs' footwear using a stripe pattern on the interior
lining free from Defendant's interference.
35. Plaintiffs seek declaratory judgment from this Court that the use of a vertical
stripe pattern on the interior of a footwear product is not capable of protection under trademark
law because it is merely ornamental and does not indicate a single source for footwear products
to purchasers and the general public.
36. Plaintiffs seek declaratory judgment from this Court that Defendant's claimed
common law trademark does not constitute a valid, protectable trademark.
SECOND CLAIM FOR RELIEF
Aesthetically Functional)
area.
39. Defendant's claim of exclusive rights to Defendant's claimed trademark is
contrary to the Lanham Act, 15 U.S.C. 1051, et seq., and further in contravention ofthe
doctrine of aesthetic functionality.
202147273.1
8


40. Notwithstanding, Defendant alleges that Plaintiffs' use of a vertical stripe pattern
on the lining of any footwear products constitutes trademark infringement, false designation of
a stripe pattern on the lining for footwear products in commerce.
Defendant concerning the right to sell Plaintiffs' footwear using a vertical stripe pattern on the
interior lining free from Defendant's interference.
42. Accordingly, Plaintiffs seek declaratory judgment from this Court that the use of a
stripe pattern on the interior of a footwear product is not capable of being protected under
trademark law because it significantly hinders the ability of other footwear competitors to fairly
compete in the marketplace.
common law trademark fails to constitute a valid, protectable trademark.
THIRD CLAIM FOR RELIEF
Lack of Secondary Meaning)
area.
46. Defendant's claimed trademark is a simple pattern consisting of vertical stripes
which is not inherently distinctive, and therefore Defendant must prove that the pattern has
acquired distinctiveness.
202147273.1
9


4 7. The use of vertical stripes in the lining and on the rim of a footwear product fails
to function as a trademark because it has not acquired distinctiveness such that it indicates the
source of Defendant's goods and distinguishes those goods from those sold by any other
footwear company.
48. Defendant's claim of exclusive rights to its claimed mark is contrary to the
Lanham Act, 15 U.S.C. 1051, et seq., and further outside ofthe scope of any cognizable claim
of rights Defendant may have thereunder.
'
49. Notwithstanding, Defendant alleges that Plaintiffs' use of a vertical stripe pattern
on the lining of its footwear products constitutes trademark infringement, false designation of
a stripe pattern on the interior lining for footwear products in commerce.
Defendant concerning the right to sell Plaintiffs' footwear using a stripe pattern free from
Defendant's interference.
trademark is not capable ofbeing protected under trademark law because it has not acquired
distinctiveness such that the claimed trademark functions as an indicator of source of footwear
products to purchasers or the general public.
common law trademark fails to constitute a valid, protectable trademark.
202147273.1
10

./

FOURTH CLAIM FOR RELIEF
(Declaratory Judgment of No Trademark or Trade Dress Infringement,
No False Designation of Origin, and No Unfair Competition)

54. Defendant claims that Plaintiffs' use of a vertical stripe pattern constitutes
trademark infringement and/or trade dress infringement, false designation of origin, and unfair
competition, and, under threat of litigation, demands that Plaintiffs cease use of its vertical stripe
pattern on footwear products in commerce.
Defendant concerning the right to sell Plaintiffs' footwear using a stripe pattern free from
Defendant's interference.
56. Plaintiffs seek declaratory judgment from this Court that the use of a vertical
stripe pattern on the interior lining of footwear products is not likely to cause confusion as to the
source, affiliation, or sponsorship of Plaintiffs' goods with that of Defendant, among an
appreciable number of purchasers.
57. Plaintiffs seek declaratory judgment from this Court that use of a vertical stripe
pattern on the interior lining for footwear products in interstate commerce does not constitute
trademark or trade dress infringement.
false designation of origin .
202147273.1
11


unfair competition.
t
60. Plaintiffs seek declaratory judgment that Defendant has suffered no, and will not
suffer any, damages or loss of goodwill as a result of Plaintiffs' use of a vertical stripe pattern on
the interior a lining for footwear products.
61. Plaintiffs seek declaratory judgment that Defendant is not entitled to any
injunctive relief or damages under 15 U.S.C. 1125.
PRAYER FOR RELIEF
WHEREFORE, Plaintiffs pray that the Court enter judgment in their favor, as follows:
A. declaring that Defendant's claimed trademark and/or trade dress fails to function
as an indicator of source because it is merely ornamental and/or lacks secondary meaning;
B. declaring that Defendant's claimed trademark is not protectable under the doctrine
of aesthetic functionality;
C. declaring that Plaintiffs', their licensees', and their authorized dealers' conduct,
including their promotion, advertising, sale and offer for sale of goods bearing a vertical stripe
pattern on footwear products, does not constitute trademark or trade dress infringement, false
designation of origin or unfair competition under the Lanham Act or under New York State law;
D. declaring that Defendant is not entitled to any injunctive relief with respect to
Plaintiffs' use of a stripe pattern as a lining for footwear products;
E. declaring that Defendant has not suffered any and will not suffer any harm, and
thus is not entitled to damages or other relief under the Lanham Act or under New York State
law;
202147273.1
12

F. declaring that Plaintiffs, their licensees and their authorized retailers are entitled
to use and sell products bearing a vertical stripe pattern on the lining for footwear products;
G. awarding Plaintiffs their costs, expenses and attorneys' fees in this action; and
H. awarding such other further relief to which Plaintiffs may be entitled as a matter
of law or equity, or which the Court deems to be just and proper.
Dated: September 11, 2013
202147273.1
Respectfully submitted,
MANA TT PHELPS & PHILLIPS, L
7 Times Square
New York, New York 10036
(212) 790-4500
Attorneys for Plaintiffs
Tommy Hiljiger US.A., Inc. and
Tommy Hiljiger Licensing LLC
13

Case 1:13-cv-06386-NRB Document 1-1 Filed 09/11/13 Page 1 of 3
EXHIBIT A
C
a
s
e

1
:
1
3
-
c
v
-
0
6
3
8
6
-
N
R
B

D
o
c
u
m
e
n
t

1
-
1

F
i
l
e
d

0
9
/
1
1
/
1
3

P
a
g
e

2

o
f

3
'''''''''''''''''''''''''''''''''''''''''''''\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\
TOMMY :. HILFIGER
INTIMATES
resh american style
INTIMATES
FALL 2006
November 7-11, 2005
11111111111111111111111111111111111111111111111111111111111111111111111111111111111111111
1
C
a
s
e

1
:
1
3
-
c
v
-
0
6
3
8
6
-
N
R
B

D
o
c
u
m
e
n
t

1
-
1

F
i
l
e
d

0
9
/
1
1
/
1
3

P
a
g
e

3

o
f

3
FRESH AMERICAN STYLE
IJ II 1
1
1 II II ll ~ I [I ll II It II II II II f.l II li II II ij IIIII I I Ill II
FRESHAMERICAN STYLE:
What i s Fresh American Style:
Living the American dream; the notion that anything is possible
Who does Fresh American Style appeal t o:
Those who want to aspire, inspire, and are determined to live an
adventurous life
What feelings does Fresh Amer ican Style conjure up:
Ivy League, East Coast , Updated Classic Preppy style
What symbols will be used to signify Fresh American Style:
Tommy Flag
Red, white, bl ue
Ithaca stripe
1111111111 II II IIIII 11111111111111111
TOMMY H I LFIGER
I NT I MATES
II 11 II U II
l i l l l l l l ~ l l l l l l l l l l l l i l l l l ~ l
C
a
s
e

1
:
1
3
-
c
v
-
0
6
3
8
6
-
N
R
B

D
o
c
u
m
e
n
t

1
-
2

F
i
l
e
d

0
9
/
1
1
/
1
3

P
a
g
e

1

o
f

2
THEME - FRESH AMERICAN STYLE
Key Influences:
Classic Prep, American Collegiate, Sports with a twist
Key Design Details:
Patch work Madras used in unexpected ways. Ithaca
Stripe used as a print detail . "Boyfriend Look," men's
wear influence
Key Color Details:
Return to Heritage Colors. Saturated colors with
bright influences
Key Fabrications :
Pinpoints, Ithaca Stripes, Madra's, Patchwork
I 111111111111111 llllllllllflllfll
TOMMY
H I LFIGER
I NTIMATES
-
-
-
-i -
-
0=
-
:I
-
-
-
~
~
-
--<
-
-
z
~
-
:;
-
>-
~
-1
n1
....
~
....
-1 ......-
(II
J:
-
-
-
~
:I:
fTI
~
r
to
-
:::0
..,.,
-
..,
0
-
l>
-<
~
-
-
C') -
,....
..,
,....
::c
;:::!
-
-
m
1\)
fTI
~
,r:J
-
0
z
-
0
c
~
m
,....
(I)
-
0
-
-
0
~
"
....
~
-
....
-
-
~
-
-
-
~

-

-
C
a
s
e

1
:
1
3
-
c
v
-
0
6
3
8
6
-
N
R
B

D
o
c
u
m
e
n
t

1
-
3

F
i
l
e
d

0
9
/
1
1
/
1
3

P
a
g
e

1

o
f

2
THEME: Fresh American Style
CONCEPT DESIGN: The Boyfriend Look
WOVEN BOXER:
Oxford Cloth with TH Crest Embroidery
Classic Tommy in look and styling
STYLE#:
DESCRIPTION :
6/25 BASIC COLORS :
6/25 FASHION COLORS:
8/25 FASHION COLORS
SIZES:
SRP:
COST:
7447908
Boxer Short
Blue Oxford ,Pink/White Ithaca
Pink Gordon Plaid,
Blue Gordon Plaid
Pink Courtyard Stripe,
Blue Courtyard Stripe,
Ithaca Frog, White THI Multi Dot
S,M,L,XL
$19.50
$ 9.36
lfiiiiiiiiiiiiiiiiJIIIIIIIIIIIIIIIIIJIIIIII
TOMMY HILFIGER
I NTlMATES
3
!))
'"' (1)
VI
-1
0
~
~
-<
y
I
r
11
CJ
m
::::0
EXHIBITB
;c:
m
n
C)
VI
:r
-o
u
)>
:z:
r.-
-o
EXHIBIT C
Trademark/Service Mark Application, Principal Register
T us
Serial Number: 85602452
Filing Date: 04/19/2012
n
NOTE: Data fields with the'" are mandatory under TEAS Plus. The wording "(ifapplicable)" appears
where the field is only mandatory under the facts of the particular application.
The table below presents the data as entered.
MARK INFORMATION
''SPECIAL FORM
USPTO-GENERATED IMAGE
kCOLORMARK
*COLOR(S) CLAIMED
(If applicable)
*DESCRIPTION OF THE MARK
(and Color Location, if applicable)
, PIXEL COUNT ACCEPTABLE
PIXEL COUNT
REGISTER
, INTERNAL ADDRESS
*STREET
"'CITY
"COUNTRY
\\TICRS\EXPORTll \IMAGEOUT
11 \856\024\85602452\xmll \ FTK0002.JPG
YES
NO
NO
The mark consists of thin striped design
inside of a shoe.
YES
944 X 944
Principal
Jumbo Bright Trading Limited
161-167 Des Voeux Road
Hong Kong Trade Center, 7 /f
Central
Hong Kong
PHONE
LEGAL ENTITY INFORMATION
: 404-228-7439
' 404-963-6231
, CORPORATION
:GOODS AND/OR SERVICES AND BASIS INFORMATION
''INTERNATIONAL CLASS
*IDENTIFICATION
''FILING BASIS
FIRST USE ANYWHERE DATE
FIRST USE IN COMMERCE DATE
SPECIMEN
FILE NAME(S)
SPECIMEN DESCRIPTION
ADDITIONAL STATEMENTS SECTION
*TRANSLATION
(if applicable)
"'TRANSLITERATION
! (if applicable)
1
'CLAJMED PRIOR REGISTRATION
(if applicable)
''CONSENT (NAME/LIKENESS)
(if applicable)
'CONCURRENT USE CLAIM
(if applicable)
ATTORNEY INFORMATION
NAME
FIRM NAME
INTERNAL ADDRESS
STREET
CITY
025
; Shoes
SECTION l(a)
At least as early as 07/08/2010
\\TlCRS\EXPORT I I \IMAGEOUT
. Snapshots of mark design as used in
; commerce
Andrea E. Bates
i Bates & Bates, LLC
Unit 101
. 964 Dekalb A venue
Atlanta
STATE
COUNTRY
ZIP/POSTAL CODE
PHONE
FAX
EMAIL ADDRESS
Georgia
United States
30307
404-228-7439
404-963-6231
abates@bates-bates.com
AUTHORIZED TO COMMUNICATE VIA EMAIL ; Yes
OTHER APPOINTED ATTORNEY
CORRESPONDENCE INFORMATION
*NAME
FIRM NAME
INTERNAL ADDRESS
''CITY
*STATE
(Required for U.S. applicants)
'COUNTRY
''ZIP/POSTAL CODE
.PHONE
Kathryn E. Cox Jason Cox
Andrea E. Bates
Bates & Bates, LLC
964 Dekalb A venue
Atlanta
Georgia
United States
30307
. 404-228-7439
404-963-6231
. abates@bates-bates.com
~ ~ ~ ~ ~ ~ ~ ~ ~ ~ ~ ~ ~
1
' AUTHORIZED TO COMMUNICATE VIA
EMAIL
. FEE INFORMATION
NUMBER OF CLASSES
FEE PER CLASS
'TOTAL FEE PAID
. SIGNATURE INFORMATION
SIGNATURE
., SIGNATORY'S NAME
' SIGNA TORY'S POSITION
SIGNATORY'S PHONE NUMBER
Yes
i 1
i 275
275
. I Andrea E. Bates/
Andrea E. Bates
Attorney ofRecord!GA
. 404-228-7439
i DATE SIGNED
TEAS Plus Application
To the Commissioner for Trademarks:
MARK: (Stylized and/or Design, see mark)
The mark consists of thin striped design inside of a shoe.
The applicant, Jumbo Bright Trading Limited, a corporation of Hong Kong, having an address of
161-16 7 Des Voeux Road,
Hong Kong Trade Center, 7 If
Central
Hong Kong
requests registration of the trademark/service mark identified above in the United States Patent and
Trademark Office on the Principal Register established by the Act of July 5, 1946 (15 U.S.C. Section 1051
et seq.), as amended, for the following:
For specific filing basis information for each item, you must view the display within the Input Table.
International Class 025: Shoes
In International Class 025, the mark was first used by the applicant or the applicant's related company or
licensee predecessor in interest at least as early as 07/08/2010, and first used in commerce at least as early
as 07/08/2010, and is now in use in such commerce. The applicant is submitting one( or more) specimen(s)
showing the mark as used in commerce on or in connection with any item in the class of listed goods
and/or services, consisting of a(n) Snapshots of mark design as used in commerce.
Specimen Filc1
Specimen File2
The applicant's current Attorney Information:
Andrea E. Bates and Kathryn E. Cox Jason Cox of Bates & Bates, LLC
Unit 101
964 Dekalb A venue
Atlanta, Georgia 30307
United States
The applicant's current Correspondence Information:
Andrea E. Bates
Bates & Bates, LLC
Unit 101
964 Dekalb A venue
404-228-7439(phone)
404-963-6231 (fax)
abates@bates-bates.com (authorized)
A fee payment in the amount of $275 has been submitted with the application, representing payment for 1
class(es).
Declaration
The undersigned, being hereby warned that willful false statements and the like so made are punishable by
fine or imprisonment, or both, under 18 U.S.C. Section 1001, and that such willful false statements, and
the like, may jeopardize the validity of the application or any resulting registration, declares that he/she is
properly authorized to execute this application on behalf of the applicant; he/she believes the applicant to
be the owner of the trademark/service mark sought to be registered, or, if the application is being filed
under 15 U.S.C. Section 1051(b), he/she believes applicant to be entitled to use such mark in commerce;
to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right
to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to
be likely, when used on or in connection with the goods/services of such other person, to cause confusion,
or to cause mistake, or to deceive; and that all statements made of his/her own knowledge are true; and
that all statements made on information and belief are believed to be true.
Signature: I Andrea E. Bates/ Date Signed: 04119/2012
Signatory's Name: Andrea E. Bates
Signatory's Position: Attorney ofRecord/GA
RAM Sale Number: 13617
RAM Accounting Date: 04/19/2012
Internet Transmission Date: Thu Apr 19 13:27:46 EDT 2012
TEAS Stamp: USPTO/FTK-173.102.193.213-20120419132746
344374-85602452-49038d4d2cddlf57da572452
51 bc4630da-CC-13617-20120419120332551780
NOTE: Data fields with the "k are mandatory under TEAS Plus. The wording "(ifapplicable)" appears
where the field is only mandatory under the facts of the particular application.
The table below presents the data as entered.
MARK INFORMATION
kMARK
*SPECIAL FORM
USPTO-GENERATED IMAGE
'''COLOR MARK
'"COLOR(S) CLAIMED
(If applicable)
; ''DESCRIPTION OF THE MARK
(and Color Location, if applicable)
PIXEL COUNT ACCEPTABLE
: PIXEL COUNT
REGISTER
APPLICANT INFORMATION
*OWNER OF MARK
INTERNAL ADDRESS
;*STREET
*CITY
*COUNTRY
YES
NO
NO
The mark consists of thin striped design
inside of a shoe.
: Jumbo Bright Trading Limited
. Hong Kong Trade Center, 7/F
. 161-167 Des Voeux Road
'Central
Hong Kong
PHONE
FAX
EMAIL ADDRESS
LEGAL ENTITY INFORMATION
*STATE/COUNTRY OF INCORPORATION
404-228-7439
i 404-963-6231
: abates@bates-bates.com
. Hong Kong
, GOODS AND/OR SERVICES AND BASIS INFORMATION
*INTERNATIONAL CLASS
*IDENTIFICATION
*FILING BASIS
FIRST USE ANYWHERE DATE
FIRST {)SE IN COMMERCE DATE
SPECIMEN
FILE NAME(S)
SPECIMEN DESCRIPTION
, ADDITIONAL STATEMENTS SECTION
''TRANSLATION
, (if applicable)
: ''TRANSLITERATION
(if applicable)
"CLAIMED PRIOR REGISTRATION
(if applicable)
"'CONSENT (NAME/LIKENESS)
(if applicable)
'
1
CONCURRENT USE CLAIM
(if applicable)
ATTORNEY INFORMATION
NAME
FIRM NAME
. INTERNAL ADDRESS
. Snapshot of mark design as used in
commerce
Andrea E. Bates
Bates & Bates, LLC
Unit 101
' ........ , , ~ ~ " ' ' ' ' ' ' ' ~ ' ' ' ' ' ' + .. . . ~ ~ ' ' ..
'STREET
. 964 Dekalb A venue
'CITY
, Atlanta
'STATE
, Georgia
COUNTRY
ZIP/POSTAL CODE
EMAIL ADDRESS
United States
30307
404-228-7439
404-963-6231
AUTHORIZED TO COMMUNICATE VIA EMAIL Yes
OTHER APPOINTED ATTORNEY
CORRESPONDENCE INFORMATION
*NAME
FIRM NAME
INTERNAL ADDRESS
'*CITY
*STATE
(Required for U.S. applicants)
PHONE
FAX
'''EMAIL ADDRESS
*AUTHORIZED TO COMMUNICATE VIA
EMAIL
FEE INFORMATION
, NUMBER OF CLASSES
FEE PER CLASS
. ''TOTAL FEE PAID
SIGNATURE INFORMATION
k SIGNATURE
SIGNATORY'S NAME
SIGNATORY'S POSITION
SIGNATORY'S PHONE NUMBER
DATE SIGNED
Kathryn E. Cox Jason Cox
Bates & Bates, LLC
. Unit 101
964 Dekalb A venue
; Georgia
United States
30307
404-228-7439
404-963-6231
. abates@bates-bates.com
. Yes
I Andrea E. Bates/
. Andrea E. Bates
Attorney of Record/GA
: 404-228-7439
04/19/2012
To the Commissioner for Trademarks:
MARK: (Stylized and/or Design, see mark)
The mark consists of thin striped design inside of a shoe.
The applicant, Jumbo Bright Trading Limited, a corporation of Hong Kong, having an address of
Hong Kong Trade Center, 7/F,
161-167 Des Voeux Road
Central
Hong Kong
requests registration of the trademark/service mark identified above in the United States Patent and
Trademark Office on the Principal Register established by the Act of July 5, 1946 (15 U.S. C. Section 1051
et seq.), as amended, for the following:
For specific filing basis information for each item, you must view the display within the Input Table.
International Class 025: Shoes
In International Class 025, the mark was first used by the applicant or the applicant's related company or
licensee predecessor in interest at least as early as 07/08/2010, and first used in commerce at least as early
as 07/08/2010, and is now in use in such commerce. The applicant is submitting one( or more) specimen(s)
showing the mark as used in commerce on or in connection with any item in the class of listed goods
and/or services, consisting of a(n) Snapshot of mark design as used in commerce.
Specimen File 1
The applicant's current Attorney Information:
Andrea E. Bates and Kathryn E. Cox Jason Cox of Bates & Bates, LLC
Unit 101
964 Dekalb A venue
United States
The applicant's current Correspondence Infonnation:
Andrea E. Bates
Bates & Bates, LLC
Unit 101
964 Dekalb A venue
404-228-7439(phone)
404-963-6231(fax)
abates@bates-bates.com (authorized)
A fee payment in the amount of$275 has been submitted with the application, representing payment for 1
class(es).
Declaration
The undersigned, being hereby warned that willful false statements and the like so made are punishable by
fine or imprisonment, or both, under 18 U.S.C. Section 1001, and that such willful false statements, and
the like, may jeopardize the validity of the application or any resulting registration, declares that he/she is
properly authorized to execute this application on behalf of the applicant; he/she believes the applicant to
be the owner of the trademark/service mark sought to be registered, or, if the application is being filed
under 15 U.S.C. Section 1051(b), he/she believes applicant to be entitled to use such mark in commerce;
to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right
to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to
be likely, when used on or in connection with the goods/services of such other person, to cause confusion,
or to cause mistake, or to deceive; and that all statements made of his/her own knowledge are true; and
that all statements made on information and belief are believed to be true.
Signature: /Andrea E. Bates/ Date Signed: 04119/2012
Signatory's Name: Andrea E. Bates
Signatory's Position: Attorney of Record/GA
RAM Sale Number: 13840
RAM Accounting Date: 04/19/2012
Internet Transmission Date: Tlm Apr 19 13:42:13 EDT 2012
TEAS Stamp: USPTO/FTK-173.1 02.193.213-20120419134213
696390-85602476-490aa6efa6197a05db935787
52bd9d8480-CC-13840-20120419133259671396
EXHIBITD
To:
Subject:
Sent:
Jumbo Bright Trading Limited (abates@bates-bates.com)
U.S. TRADEMARK APPLICATION NO. 85602452- N/A
8/13/2012 11:43:50 AM
Sent As: ECOM106@USPTO.GOV
Attachments: Attachment- 1
Attachment - 2
Attachment - 3
Attachment - 4
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT'S TRADEMARK APPLICATION
APPLICATION SERIAL NO.
MARK:
CORRESPONDENT ADDRESS:
ANDREA E. BATES
BATES & BATES, LLC
964DEKALBAVENEAPT 101
ATLANTA, GA 30307-5606
85602452
APPLICANT: Jumbo Bright Trading Limited
CORRESPONDENT'S REFERENCE/DOCKET NO :
NIA
CORRESPONDENT E-MAIL ADDRESS:
OFFICE ACTION
*85602452*
CLICK HERE TO RESPOND
hl.tp:i/www.uspto.gov/t.rademarks/t<
STRICT DEADLINE TO RESPOND TO THIS LETTER
TO A VOID ABANDONMENT OF APPLICANT'S TRADEMARK APPLICA TlON, THE USPTO MUST
RECEIVE APPLICANT'S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE
ISSUE/MAILING DATE BELOW.
ISSUE/MAILING DATE: 8/l3/20L2
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant
must respond timely and completely to the issue(s) below. 15 U.S.C. 1062(b); 37 C.F.R. 2.62(a),
2.65(a); TMEP 711, 718.03.
The trademark examining attorney has searched the Office's database of registered and pending marks
and has found no conflicting marks that would bar registration under Trademark Act Section 2( d). TMEP
704.02; see 15 U.S.C. 1052(d).
Ornamental Refusal- Repetitive Design
Registration is refused because the applied-for mark, consisting of a repeated design or pattern used on
some or all of the inner surfaces of a product or product packaging, is not inherently distinctive.
Trademark Act Sections 1, 2, and 45, 15 U.S.C. 1051-1052, 1127; see TMEP 904.07(b). Similar to
color marks, which consist of one or more colors used on some or all of the surfaces of a product or
product packaging, such use of a pattern or repeated design does not "immediately ... signal a brand or a
product 'source."' Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 163, 34 USPQ2d 1161, 1162
(1995).
Accordingly, such marks are registrable only on the Supplemental Register or on the Principal Register
with sufficient proof of acquired distinctiveness. Cf Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S.
205, 211-12, 54 USPQ2d 1065, 1068 (2000); Qualitex, 514 U.S. at 163, 34 USPQ2d at 1163; In re
Owens-Corning Fiberglas Corp., 774 F.2d 1116, 1120-21,227 USPQ 417,419 (Fed. Cir. 1985).
Ornamental Refusal - Capable
Registration is refused because the applied- for mark, as used on the specimen of record, is merely a
decorative or ornamental feature of the goods; it does not function as a trademark to identify and
distinguish applicant's goods from those of others and to indicate the source of applicant's goods.
Trademark Act Sections 1, 2 and 45, 15 U.S.C. 1051-1052, 1127; see In re Villeroy & Bach S.A.R.L., 5
USPQ2d 1451 (TTAB 1987) (holding floral pattern design of morning glories and leaves for tableware
nondistinctive and merely a decorative pattern with no trademark significance); TMEP 904.07(b),
1202.03 et seq.; cf In re Owens-Corning Fiberglas Corp., 774 F.2d 1116,227 USPQ 417 (Fed. Cir.
1985).
Established practices of the trade may be relevant to the amount of evidence needed to show acquired
distinctiveness with respect to a mark that is merely ornamental or decorative. TMEP 1202.03(b).
Generally, more evidence is needed if the applied-for mark is used so frequently as ornamentation or
decoration in the relevant industry that consumers would be less apt to discern source-indicating
significance based on its use. See Anchor Hocking Glass Corp. v. Corning Glass Works, 162 USPQ 288,
292 (TTAB 1969) (holding ornamental cornflower design registrable as used on coffee percolators and
culinary vessels and utensils based on applicant's "voluminous evidence" of purchaser recognition of the
design as an indicia of origin, despite practices of the trade to use ornamental floral designs on such
goods); cf In re Villeroy & Boch S.A.R.L., 5 USPQ2d 1451 (TTAB 1987) (holding design ofvines with
morning glories used on tableware to be mere ornamentation where applicant concedes that "it is common
practice to decorate tableware with floral patterns;" thus the three declarations, advertising and
promotional evidence, and sales and advertising figures were found insufficient to show trademark
significance because such evidence did not refer to or promote the design as a trademark and the
advertising and promotional figures failed to distinguish between applicant's various floral patterns).
The applied-for mark, as shown on the specimen, is merely ornamental because it comprises a basic
repetitive stripe design applied to a large portion of the footwear. This manner of use is for decorative
purposes and would be perceived as such. The inside and outside of a shoe is a popular place to add an
ornamental design, as shown by the attached excerpts from several clothing and footwear websites
attached as a representative sample of practices of the trade.
Applicant may respond to the stated ornamental refusal by satisfying one of the following, as appropriate:
(1) Claiming acquired distinctiveness under Trademark Act Section 2(f) by submitting
evidence that the applied-for mark has become distinctive of applicant's goods in commerce.
Trademark Act Section 2(f), 15 U.S.C. 1 052(f). Evidence may consist of examples of advertising
and promotional materials that specifically promote, as a trademark, the mark for which
registration is sought; dollar figures for advertising devoted to such promotion; dealer and
consumer statements of recognition of the applied-for mark as a trademark; and any other evidence
that establishes recognition of the applied-for mark as a trademark for the goods. See 37 C.P.R.
2.41(a); TMEP 1202.03(d), 1212.06 et seq.;
(2) Submitting evidence that the applied-for mark is an indicator of secondary source or
sponsorship for the identified goods. Univ. Book Store v. Univ. of Wis. Bd. of Regents, 33
USPQ2d 1385, 1405 (TTAB 1994); In re Olin Corp., 181 USPQ 182, 182 (TTAB 1973). That is,
applicant may submit evidence showing that the applied-for mark would be recognized as a
trademark through applicant's use of the mark with goods and/or services other than those being
refused as ornamental. In re The Original Red Plate Co., 223 USPQ 836, 837 (TTAB 1984).
Applicant must establish that, as a result of this use in connection with other goods and/or services,
the public would recognize applicant as the secondary source of, or sponsor for, the identified
goods. See TMEP 1202.03(c).;
(3) Amending the application to seek registration on the Supplemental Register.
Trademark Act Section 23, 15 U.S.C. 1091; see 37 C.P.R. 2.47, 2.75(a); TMEP 801.02(b),
816.; or
(4) Submitting a substitute specimen that shows non-ornamental trademark use, and the
following statement, verified with an affidavit or signed declaration under 37 C.P.R. 2.20: "The
substitute specimen was in use in commerce at least as early as the filing date of the
application." 37 C.P.R. 2.59(a); TMEP 904.05; see 37 C.P.R. 2.193(e)(1). If submitting a
substitute specimen requires amendment to the dates of use, applicant must also verify the
amended dates. 37 C.P.R. 2.71(c); TMEP 904.05.
If applicant cannot satisfy one of the above, applicant may amend the application from a use in commerce
basis under Trademark Act Section 1 (a) to an intent to use basis under Section 1 (b), and the refusal will be
withdrawn. See TMEP 806.03(c). However, if applicant amends the basis to Section 1(b), registration
will not be granted until applicant later amends the application back to use in commerce by filing an
acceptable allegation ofuse with a proper specimen. See 15 U.S.C. 1051(c), (d); 37 C.P.R. 2.76, 2.88;
TMEP 1103. If the same specimen is submitted with an allegation of use, the same refusal will issue.
To amend to Section 1 (b), applicant must submit the following statement, verified with an affidavit or
signed declaration under 37 C.P.R. 2.20: "Applicant has had a bona fide intention to use the mark in
commerce on or in connection with the goods or services listed in the application as of the filing date of
the application." 37 C.P.R. 2.34(a)(2); TMEP 806.01(b); see 15 U.S.C. 1051(b); 37 C.P.R.
2.35(b )(1 ), 2.193( e )(1 ).
Configuration Mark- Accurate Description Required
For marks consisting of a configuration of the goods or their packaging or a specific design feature of the
goods or packaging, the drawing must depict a single three-dimensional view of the goods or packaging,
showing in solid lines those features that applicant claims as its mark. See 37 C.P.R. 2.52(b)(2); TMEP
807.1 0, 1202.02(c)(iv); In re Minn. Mining & Mfg. Co., 335 F.2d 836, 839, 142 USPQ 366, 368-69
(C. C.P.A. 1964). If the mark cannot be adequately depicted in a single rendition, applicant must file a
petition to the Director requesting that the requirement to provide a single rendition of the mark be
waived. TMEP 807.10.
If the drawing of the mark includes additional matter not claimed as part of the mark (e.g., matter that
shows the position or placement of the mark), applicant must depict such matter using broken or dotted
lines. 37 C.P.R. 2.52(b)(4); In re Famous Foods, Inc., 217 USPQ 177, 177 (TTAB 1983); TMEP
807.08, 1202.02(c)(i); see In re Water Gremlin Co., 208 USPQ 89,91 (C.C.P.A. 1980).
In addition to these drawing requirements, applicant must also submit a clear and concise description of
the mark that does the following:
(1) Indicates that the mark is a three-dimensional configuration of the goods or their packaging or
of a specific design feature of the goods or packaging;
(2) Specifies all the elements in the drawing that constitute the mark and are claimed as part of the
mark; and
(3) Specifies any elements which are not part of the mark and indicates that the matter shown in
broken or dotted lines is not part of the mark and serves only to show the position or placement of
the mark.
See 37 C.P.R. 2.37, 2.52(b)(2), (b)(4); In re Famous Foods, Inc., 217 USPQ 177, 178 (TTAB 1983);
TMEP 807.08, 807.10, 1202.02(c)(ii).
The following description would be acceptable: "The mark consists of a vertical stripe pattern throughout
the entire inside lining of the shoe. The vertical stripe pattern is not on the insole. The mark also consists
of a three vertical stripe design on the shoe rim near the heel area. The broken or dotted lines are not part
of the mark and serve only to show the position or placement of the mark."
Mark Differs on Drawing and Specimen
The mark on the specimen disagrees with the mark on the drawing. In this case, the specimen displays the
mark with a five vertical stripe design on the shoe rim near the heel area; and the drawing shows the mark
with a three vertical stripe design on the shoe rim near the heel area. The difference is with the number of
stripes on the design on the shoe rim near the heel area.
An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for
mark in use in commerce for each class of goods and/or services. Trademark Act Sections 1 and 45, 15
U.S.C. 1051, 1127; 37 C.P.R. 2.34(a)(1)(iv), 2.56(a); TMEP 904, 904.07(a). The mark on the
drawing must be a substantially exact representation of the mark on the specimen. 37 C.P.R. 2.51(a);
TMEP 807.12(a); see 37 C.P.R. 2.72(a)(l). In addition, the drawing ofthe mark can be amended only if
the amendment does not materially alter the mark as originally filed. 37 C.P.R. 2.72(a)(2); see TMEP
807.12(a), 807.14 et seq.
Therefore, applicant must submit one of the following:
(I) A new drawing of the mark that agrees with the mark on the specimen but does not materially
alter the original mark. See 37 C.P.R. 2.72(a)(2); TMEP 807.12(a), 807.14 et seq. Amending
the drawing to agree with the specimen would not be considered a material alteration of the mark
in this case.
(2) A substitute specimen showing use in commerce of the mark on the drawing, and the
following statement, verified with an affidavit or signed declaration under 37 C.P.R. 2.20: "The
substitute specimen was in use in commerce at least as early as the filing date of the
application." See 37 C.P.R. 2.59(a), 2.193(e)(1); TMEP 807.12(a), 904.05. If submitting a
specimen requires an amendment to the dates of use, applicant must also verify the amended
dates. 37 C.P.R. 2.71(c); TMEP 904.05.
Pending receipt of a proper response, registration is refused because the specimen does not show the
applied-for mark in use in commerce as a trademark and/or service mark. Trademark Act Sections 1 and
45, 15 U.S.C. 1051, 1127; 37 C.P.R. 2.34(a)(l)(iv), 2.56(a); TMEP 904, 904.07(a).
TEAS PLUS APPLICANTS MUST SUBMIT DOCUMENTS ELECTRON! CALLY OR SUBMIT
FEE: Applicants who filed their application online using the reduced-fee TEAS Plus application must
continue to submit certain documents online using TEAS, including responses to Office actions. See 37
C.P.R. 2.23(a)(l). For a complete list of these documents, see TMEP 819.02(b). In addition, such
applicants must accept correspondence from the Office via e-mail throughout the examination process and
must maintain a valid e-mail address. 37 C.P.R. 2.23(a)(2); TMEP 819, 819.02(a). TEAS Plus
applicants who do not meet these requirements must submit an additional fee of $50 per international class
of goods and/or services. 37 C.P.R. 2.6(a)(l)(iv); TMEP 819.04. In appropriate situations and where
all issues can be resolved by amendment, responding by telephone to authorize an examiner's amendment
will not incur this additional fee.
/Tejbir Singh/
Trademark Attorney
Law Office I 06
571-272-5878
571-273-9106 (fax)
Tejbir.Singh@uspto.gov (informal inquiries only)
TO RESPOND TO THIS LETTER: Go to http://www.uspto.gov/trademarks/teas/response fonns.jsp. Please
wait 48-72 hours from the issue/mailing date before using TEAS, to allow for necessary system updates of
the application. For technical assistance with online forms, e-mail For questions
about the Office action itself, please contact the assigned trademark examining attorney. E-mail
communications will not be accepted as responses to Office actions; therefore, do not respond to this
Office action by e-mail.
All informal e-mail communications relevant to this application will be placed in the official
application record.
WHO MUST SIGN THE RESPONSE: It must be personally signed by an individual applicant
or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint
applicants). If an applicant is represented by an attorney, the attorney must sign the response.
PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant does
not miss crucial deadlines or official notices, check the status of the application every three to four months
using Trademark Applications and Registrations Retrieval (TARR) at http://tarr.uspto.gov/. Please keep a
copy of the complete T ARR screen. If T ARR shows no change for more than six months, call 1-800-786-
9199. For more information on checking status, see http://www.uspto.gov/trademarks/process/status/.
TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at
http://www.uspto.gov/teas/eTEASpageE.htm.
Website fo1_this
Stripe Design flip flop shoes for woman
S:JJ1d<.if)iV ....
Full-size image
800 600 ( 1 .3x larger), 84KB
More sizes
Search by 1mage
Similar images
Type: JPG
Images may be to copyright.
:C<>P<i<'$1in>l:l!\U .. ' "'"'jH" O..Mo
<!.,..., >.IIJ!l'.>k""" """'""' """'"""'"-" """"''"'

Home Vox Shovel head- Men's
mouse over image above to z:-oom
W ltems.t>
SNOW
Vox Shovelhead Men's
$29.99- $54.99
1ffr1fr1irt. fi
SEARCH
VVetcorne, (3uest, click here
BRANDS CONTESTS
Product#: 11-05231

Now:
Read 1 review Writ-e a revte-w
Qty: 1
Selected Style: Royal Blue/StripeiWhrte I Width - 0 - Medium
Neill CC s
Selected Size: none
Availability:
I os.sll 09.o II Oils
..

r
l
T
Description Sizing Reviews
ADD TO WISIHIST
ProductQ&A
Ryan Smith's pro model for Vox. featuring custom artwork an the Insole Inspired oy Ryan Smith's tattoos. Soft suede
upper Wttn s>gnature Ryan Smith labeling and colorways Lace-up closure for a secure m Thinly padded collar and
tongue. Vent holes on side tor breathabillty. Vox I.R.S. Gel system and cushioned EVA Insole for comfortable board
reeL Vulcanized construction. Durable rubber outsole with onginal Vox z.;g zag tread Imported
SEND A
ccs
GIFTCARD
SKATEBOARD
BUILDER
SIGN UP FOR EMAIL ALERTS
USER Yc>cr Ernarl ,\dcirBss I
FEEDBACK SIGN UP FOR MO!HLE ALERTS
) .Jr""%. !Enter IIMob'io IINurnoet!GI
l'JeN [ Shoes ] CfmtH!lg Accesson.es i Skate Snow i Saf-e ; Grands ! Teatr ! B!Gg 1 i Skat0!Joard Bmkler i SHe IAap
Store Locator l Free 1 Gltt Cards ! S!ZE Chan 1 Car.-ers ! tJfillates GormK1 Us ! 1 600 676 Pdvacy Poi ley i T Erms of us-e
To:
Subject:
Sent:
Sent As:
Attachments:
Jumbo Bright Trading Limited
U.S. TRADEMARK APPLICATION NO. 85602452 - Nl A
8/13/2012 11:43:50 AM
ECOM106@USPTO.GOV
IMPORTANT NOTICE REGARDING YOUR
U.S. TRADEMARK APPLICATION
USPTO OFFICE ACTION HAS ISSUED ON 8/13/2012 FOR
SERIAL NO. 85602452
Please follow the instructions below to continue the prosecution of your application:
TO READ OFFICE ACTION: Click on this link or go to
http://portal.uspto.gov/external/portal/tow and enter the application serial number to the
Office action.
PLEASE NOTE: The Office action may not be immediately available but will be viewable within 24
hours of this e-mail notification.
RESPONSE IS REQUIRED: You should carefully review the Office action to determine (1) how to
respond; and (2) the applicable response time period. Your response deadline will be calculated from
3/lOU (or sooner if specified in the office action).
Do NOT hit "Reply" to this e-mail notification, or otherwise attempt to e-mail your response, as the
USPTO does NOT accept e-mailed responses. Instead, the USPTO recommends that you respond
online using the Trademark Electronic Application System Response Form.
HELP: For technical assistance in accessing the Office action, please e-mail
TDR@uspto.gov. Please contact the assigned examining attorney with questions about the Office
action.
WARNING
Failure to file the required response by the applicable deadline will result in the
ABANDONMENT of your application.
EXHIBITE
To:
Subject:
Sent:
Jumbo Bright Trading Limited (abates@bates-bates.com)
U.S. TRADEMARK APPLICATION NO. 85602452- NIA
2115/2013 12:49:32 PM
Sent As: ECOM106@USPTO.GOV
Attachments:
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT'S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 85602452
MARK:
CORRESPONDENT ADDRESS:
ANDREA E. BATES
BATES & BATES, LLC
964 DEKALB AVE NE APT 101
ATLANTA, GA 30307-5606
APPLICANT: Jumbo Bright Trading Limited
CORRESPONDENT'S REFERENCE/DOCKET NO :
NIA
CORRESPONDENT E-MAIL ADDRESS:
OFFICE ACTION
*85602452*
CLICK HERE TO RESPOND TO
http://www.uspto.gov/tradcmarks/tcas/n
STRICT DEADLINE TO RESPOND TO THIS LETTER
TO A VOID ABANDONMENT OF APPLICANT'S TRADEMARK APPLICATION, THE USPTO
MUST RECEIVE APPLICANT'S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS
OF THE ISSUE/MAILING DATE BELOW.
ISSUE/MAILING DATE:
This Office Action is in response to applicant's correspondence dated 12/28/12.
The following refusal and requirement is now withdrawn: 1) Configuration Mark- Accurate Description,
and 2) Ornamental Refusal- Repetitive Design. This refusal is withdrawn because applicant's complete
mark does not consist of a repetitive design.
TMEP 714.04.
Applicant should note the following refusal and requirements:
New Requirement- Drawing
The drawing page shows two versions of the same mark that make the same commercial impression. The
application must be limited to one mark. 37 C.F.R. 2.52; TMEP 807.01. Therefore, applicant must
delete one version of the mark from the drawing page.
New Refusal- Claim of Acquired Distinctiveness Not Accepted
Applicant's claim of acquired distinctiveness is not acceptable. The burden of proving that a mark has
acquired distinctiveness is on the applicant. Yamaha Int'l Corp. v. Yoshino Gakki Co. , 840 F.2d 1572, 6
USPQ2d 1001, 1004 (Fed. Cir. 1988); In re Meyer & Wenthe, Inc., 267 F.2d 945, 122 USPQ 372
(C.C.P.A. 1959); TMEP 1212.01. An applicant must establish that the purchasing public has come to
view the proposed mark as an indicator of origin.
In determining whether the proposed mark has acquired distinctiveness, the following factors are generally
considered: (1) length and exclusivity of use of the mark in the United States by applicant; (2) the type,
expense and amount of advertising ofthe mark in the United States; and (3) applicant's efforts in the
United States to associate the mark with the source of the goods and/or services, such as unsolicited media
coverage and consumer studies. See In re Steelbuilding.com, 415 F.3d 1293, 1300, 75 USPQ2d 1420,
1424 (Fed. Cir. 2005). A showing of acquired distinctiveness need not consider all of these factors, and
no single factor is determinative. In re Steelbuilding.com, 415 F.3d at 1300, 75 USPQ2d at 1424; see
TMEP 1212 et seq.
In the present case, applicant has not been using its mark for a significant period of time. Based on
applicant's dates ofuse, its first use was on 7/8/2010. Thus, applicant has not shown that its mark has
become distinctive of the goods by reason of substantially exclusive and continuous use in commerce for
the five years before the date when the claim of distinctiveness is made. See 37 C.F.R. 2.41(b); TMEP
1212.05-1212.05(d).
While affidavits and declarations that assert recognition of the mark as a source indicator are relevant in
establishing acquired distinctiveness, the value of the affidavits or declarations depends on the statements
made and the identity of the affiant or declarant. See In re Chern. Dynamics Inc., 839 F.2d 1569, 1571,5
USPQ2d 1828, 1830 (Fed. Cir. 1988) (finding conclusionary declaration from applicant's vice-president
insufficient without the factual basis for the declarant's belief that the design had become distinctive).
Proof of distinctiveness also requires more than proof of the existence of a relatively small number of
people who associate a mark with the applicant. See In re The Paint Prods. Co., 8 USPQ2d 1863, 1866
(TTAB 1988) ("Because these affidavits were sought and collected by applicant from ten customers who
have dealt with applicant for many years, the evidence is not altogether persuasive on the issue of how the
average customer for paints perceives the words 'PAINT PRODUCTS CO.' in conjunction with paints
and coatings."); see also Mag Instrument Inc. v. Brinkmann Corp., 96 USPQ2d 1701, 1723 (TT AB 201 0)
(finding sixteen declarations of little persuasive value, as they were nearly identical in wording and only
one of the declarants was described as an end consumer); In re Gray Inc., 3 USPQ2d 1558, 1560 (TTAB
1987) (finding affidavit of applicant's counsel expressing his beliefthat the mark has acquired secondary
meaning of "no probative value whatsoever" because, among other reasons, the statement is subject to
bias); In re Petersen Mfg. Co., 2 USPQ2d 2032, 2035 (TT AB 1987) (finding declarations from customers
which stated that designs used by applicant indicate to the declarant that the applicant is the source of the
goods, but which did not refer to or identify the designs with any specificity, not persuasive); In re Bose
Coro., 216 USPO 1001. 1005 (TTAB 1983), aff'd, 772 F.2d 866, 227 USPO 1 (Fed. Cir. 1985) (deeming
retailer's statement that he has been in contact with many purchasers of loudspeaker systems of whom a
substantial number would recognize the depicted design as originating with applicant competent evidence
of secondary meaning); In re Flex-0-Glass, Inc., 194 USPQ 203, 206 (TTAB 1977) ("[T]he fact that the
affidavits may be similar in format and expression is of no particular significance ... since the affiants have
sworn to the statements contained therein.").
Applicant has provided affidavits from two celebrity endorsers, a clothing company founder, a talent
company founder, and an international publishing director. However, of these affidavits, three specifically
refer to the blue and white striped lining of the shoes. The current application is not limited to this
purported famous blue and white striped color scheme. Additionally, the three vertical stripe pattern on
the heel rim is not noted in any of the affidavits. Applicant has also not provided any affidavits from an
average or typical end user.
Applicant has provided evidence of sales figures for the goods at issue. Specifically, applicant indicates it
has "experienced over $1.2 million in sales," and that it has sold "almost 37,000 shoes." However, such
evidence is not dispositive of whether the proposed mark has acquired distinctiveness. Such extensive
sales and promotion may demonstrate the commercial success of applicant's goods and/or services, but
not that relevant consumers view the matter as a mark for such goods and/or services. See In re Boston
Beer Co., 198 F.3d 1370, 53 USPQ2d 1056 (Fed. Cir. 1999);/n re Busch Entm 't Corp., 60 USPQ2d
1130, 1134 (TTAB 2000). Similarly, applicant's advertising and sales expenditures are merely indicative
of its efforts to develop distinctiveness; not evidence that the mark has acquired distinctiveness. See In re
Pennzoil Prods. Co., 20 USPQ2d 1753 (TTAB 1991).
Applicant has provided several print and web advertisements and media commentaries. However, none of
these materials point to applicant's mark, both the stripes inside the shoe and the three stripe vertical
design on the heel rim, as the distinct feature that consumers should "look for" to recognize that the
product is a Charles Philip shoe. The actual mark does not appear to be highlighted or noted in any of
these materials.
The ultimate test in determining whether a designation has acquired distinctiveness is applicant's success,
rather than its efforts, in educating the public to associate the proposed mark with a single source. See In
re Chevron Intellectual Prop. Group LLC, 96 USPQ2d 2026, 2031 (TTAB 2010) (finding evidence of
acquired distinctiveness deficient in part because of the lack of advertisements promoting recognition of
pole spanner design as a service mark); Mag Instrument Inc. v. Brinkmann Corp., 96 USPQ2d 1701, 1723
(TTAB 2010) (finding absence of"look for" advertisements damaging to attempt to demonstrate acquired
distinctiveness ofproposed configuration mark); Nextel Commc'ns, Inc. v. Motorola, Inc., 91 USPQ2d
1393, 1408 (TTAB 2009) (sustaining opposition on the ground that sound mark had not acquired
distinctiveness in part because applicant failed to provide evidence corroborating that the mark was used
in advettisements in such a way that it would be recognized as a source identifier for cellular telephones);
In re E.!. Kane, Inc., 221 USPQ 1203, 1206 (TTAB 1984) (affinning refusal to register OFFICE
MOVERS, INC., for moving services, notwithstanding 2() claim based on, inter alia, evidence of
substantial advertising expenditures. "There is no evidence that any of the advertising activity was
directed to creating secondary meaning in applicant's highly descriptive trade name."); In re Kwik Lok
Corp., 217 USPQ 1245, 1247-48 (TTAB 1983) (holding evidence insufficient to establish acquired
distinctiveness for configuration of bag closures made of plastic, notwithstanding applicant's statement
that advertising of the closures involved several hundred thousands of dollars, where there was no
evidence that the advertising had any impact on purchasers in perceiving the configuration as a mark).
For the reasons set forth above, applicant's claim of acquired distinctiveness is not accepted.
Ornamental Refusal- Capable
The ornamental refusal is continued.
Mark Differs on Drawing and Specimen
This requirement is continued. As indicated previously, the specimen displays the mark with a five
vertical stripe design on the shoe rim near the heel area, and the drawing shows the mark with a three
vertical stripe design on the shoe rim near the heel area.
TEAS PLUS APPLICANTS MUST SUBMIT DOCUMENTS ELECTRONICALLY OR SUBMIT
FEE: Applicants who filed their application online using the reduced-fee TEAS Plus application must
continue to submit certain documents online using TEAS, including responses to Office actions. See 3 7
C.P.R. 2.23(a)(l). For a complete list of these documents, see TMEP 819.02(b). In addition, such
applicants must accept correspondence from the Office via e-mail throughout the examination process and
must maintain a valid e-mail address. 37 C.P.R. 2.23(a)(2); TMEP 819, 819.02(a). TEAS Plus
applicants who do not meet these requirements must submit an additional fee of $50 per international class
of goods and/or services. 37 C.P.R. 2.6(a)(l)(iv); TMEP 819.04. In appropriate situations and where
all issues can be resolved by amendment, responding by telephone to authorize an examiner's amendment
will not incur this additional fee.
/Tejbir Singh/
Trademark Attorney
Law Office 106
571-272-5878
571-273-9106 (fax)
Tejbir.Singh@uspto.gov (informal inquiries only)
TO RESPOND TO THIS LETTER: Go to http://www.uspto.gov/trademarks/tcas/response forms.jsp. Please
wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System
(TEAS), to allow for necessary system updates of the application. For technical assistance with online
forms, e-mail TEASCd1uspto.gov. For questions about the Office action itself, please contact the assigned
trademark examining attorney. E-mail communications will not be accepted as responses to Office
actions; therefore, do not respond to this Office action by e-mail.
All informal e-mail communications relevant to this application will be placed in the official
application record.
WHO MUST SIGN THE RESPONSE: It must be personally signed by an individual applicant or
someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint
applicants). If an applicant is represented by an attorney, the attorney must sign the response.
PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant does
not miss crucial deadlines or official notices, check the status of the application every three to four months
using the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.uspto.gov/. Please keep
a copy of the TSDR status screen. If the status shows no change for more than six months, contact the
Trademark Assistance Center by e-mail at TrademarkA.ssistanceCenter(aJ,uspto.gov or call 1-800-786-
9199. For more information on checking status, see http://www.uspto.gov/trademarks/process/status/.
TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at
http://www.uspto.gov/trademarks/teas/correspondence.jsp.
To:
Subject:
Sent:
Sent As:
Jumbo Bright Trading Limited (abates(CV,batcs-batcs.com)
U.S. TRADEMARK APPLICATION NO. 85602452- N/A
2115/2013 12:49:32 PM
ECOM106@USPTO.GOV
Attachments:
IMPORTANT NOTICE REGARDING YOUR
U.S. TRADEMARK APPLICATION
USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED
ON 13 FOR U.S. APPLICATION SERIAL NO. 85602452
Please follow the instructions below:
(1) TO READ THE LETTER: Click on this link or go to http://tsdr.uspto.gov, enter the U.S.
application serial number, and click on "Documents."
The Office action may not be immediately viewable, to allow for necessary system updates of the
application, but will be available within 24 hours of this e-mail notification.
(2) TIMELY RESPONSE IS REQUIRED: Please carefully review the Office action to determine (1)
how to respond, and (2) the applicable response time period. Your response deadline will be calculated
from 2/t5/20I3 (or sooner if specified in the Office action). For information regarding response time
periods, see http://www.uspto.gov/trademarks/process/status/responsetime.jsp.
Do NOT hit "Reply" to this e-mail notification, or otherwise e-mail your response because the
USPTO does NOT accept e-mails as responses to Office actions. Instead, the USPTO recommends that
you respond online using the Trademark Electronic Application System (TEAS) response fonn located at
http://www.uspto.gov/trademarks/teas/response forms.jsp.
(3) QUESTIONS: For questions about the contents of the Office action itself, please contact the
assigned trademark examining attorney. For technical assistance in accessing or viewing the Office action
in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR(ci/uspto.gov.
WARNING
Failure to file the required response by the applicable response deadline will result in the
ABANDONMENT of your application. For more information regarding abandonment, see
http://www. uspto. gov /trademarks/basics/abandon. j sp.
PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION: Private
companies not associated with the USPTO are using information provided in trademark applications to
mail or e-mail trademark-related solicitations. These companies often use names that closely resemble the
USPTO and their solicitations may look like an official government document. Many solicitations require
that you pay "fees."
Please carefully review all correspondence you receive regarding this application to make sure that you are
responding to an official document from the USPTO rather than a private company solicitation. All
ofticial USPTO correspondence will be mailed only from the "United States Patent and Trademark
Office" in Alexandria, VA; or sent by e-mail from the domain "@uspto.gov." For more information on
how to handle private company solicitations, see
http://www.uspto.gov/trademarks/solicitation wamings.jsp.
WOMEN'S FLAG COLLECTION

BELLA 10/25
S.R.P. $60.00
TWI9482
IS] TWI9484

Green Suede Tan

TW20244

Dark Brown
Pink Suede
Suede
3/25

TWI9479
TW20605
Black White

;)
;:] TWI9483

Orange Suede

BRITT I 1/25
S.R.P. $60.00

TWI9477 Navy/Off White

-r::l TWI9476
Off White/Red

TWI9475 Black/Black

:1

SCHULYER
10/25
S.R.P. $65.00
TWI9994 Dark Brown

TWI9993 Black

ws
WOMEN' S FLAG COLLECTION
PAIGE 3/25
~
~
S.R.P. $60.00
TW20590 Navy
~
~
EJ
TW20591 White
I:
~
TW22489 Brown ~
1:
~
TW22080 Black
~
~
~
~
~
1:
~
1:
1:
1:
1:
1:
It
~
It
It
~
r:
I(
II:
~
III
II:
W8
I!
EXHIBIT G
EXHIBITH
Andrea Bates
Via UPS- Signature Required
General Counsel
Tommy Hilfiger Wholesale, Inc.
200 Madison Ave.
New York, NY 10016
March25, 2013
Re: !om my Hilfiger of Philip Shoes
Dear Counsel:
We represent Jtm1bo Bright Trading Limited ("JBTL"). JBTL is the exclusive worldwide owner and
distributor of CHARLES PHILIP brand loafers. JBTL has offered the distinctive CHARLES PHILIP
loafers in the United States since July 2010 and has since built up significant goodwill and notoriety
regarding the same. In addition to the common law disti11ctive sniped designs, there are two trademark
applications (Exhibit f\) that cover the sniped design on the inside of the CHARLES PHJIJP loafers.
Additionally, there are also two design patents covering CHARLES PHILIP loafers. See Exhibit B.
Recently we have discovered that Tommy Hilfigcr Wholesale, Inc. ("Tommy Hilfiger") is using similar
marks and striped designs in connection with its Kalani loafers. Shoes bearing these confi.Jsingly similar
designs are available for sale on the Tommy Hilfiget v,rebsite as well as at many retailers such as
shoes.com, Macy's, and Piperlime. Example screenshots of these confusingly similar shoes are attached
as Exhibit C. A comparison of the Tonuny Hilfiger loafers to the Genuine CHARLES PHILIP loafers
demonstrate that Tommy Hilfiger infringes JBTL's intellectual property, specifically the distinctive
stripes on the inside of the genuine CHARLES PHlLIP loafers.
This letter is being sent to protest this unauthmized use of a similar design on Tommy Hilfiger loafers,
which are confusingly similar to genuine CHARLES Pl-ITLIP designs. Tommy Hilfiger's use of the
design unfairly capitalizes on the goodwill and reputation embodied in the CHARLES PHILIP designs.
The public will and likely already has mistakenly believed that Tommy I-Iilfigel"s use of the distinctive
designs me somehow authorized, sponsored by, or somehow affiliated with JBTL.
In addition to possible design patent infiingement, this type of deceptive trade practice constitutes trade
dress inliingement under Section 43(a) of the Lanham Act, 15 U.S. C. 1125(a), and violates state trade
dress and dilutions statutes as well as conunon law p1ineiples of unfair competition and misappropriation.
As recently confirmed by the 2
11
d Circuit in an important case for the fashion industry, a distinctive color
or pattern on a shoe can fi.mction as a uademark. Loul2outin SA v. Saint
2012 WL 3832285 (2"d Cir. Sept. 5, 2012).
We hereby demand that Tonuny Hilfiger immediately cease and desist from using the confusingly similar
designs on any products, advertisements or in cmmection with any services. We further request that
Tommy Hilfiger certify that Tonuny Hil:figer and any affiliated entity or agent (such as retailers selling
1890 Mcuietta Boulevard
Atlanta. Georgia 30318

404.228.7439 ext. 104
the shoes) will (1) immediately cea<;e use of the distinctive designs or any trade dress confusingly similar
to the CHARLES PHI:UP designs and (2) rescind and refrain from any fwther adve1tisements bearing tlle
PHILIP distinctive designs or any marks or designs confusingly similar to the CHARLES
PHILIP designs.
I look forward to receiving your prompt response with regard to this matter.
Tlus letter is sent without prejudice to JBTL's rights and claims, all of which are expressly reserved.
Regards,
Andrea Bates
EXHIBIT I
manatt
manatt 1 phelps 1 phillips
April 22, 2013
VIA EMAIL AND FIRST CLASS MAIL
Andrea Bates, Esq.
Bates & Bates
1890 Marietta Boulevard
Re: Tommy Hilfiger "Kalani" Shoe
Dear Ms. Bates:
Darren W Saunders
Manatt, Phelps & Phillips, LLP
Direct Dial: (212) 790-4600
Direct Facsimile: (212) 790-6303
E-mail: DSaunders@manatt.com
Further to our letter of April II, 2013, we have carefully reviewed the claims in your
letter of March 25, 2013 on behalf of your client Jumbo Bright Trading Limited ("JBTL")
concerning a Tommy Hilfiger women's slip on shoe, style "Kalani." We represent and are
responding on behalf ofMBF Holdings LLC, the exclusive licensee of Tommy Hilfiger
Licensing LLC, for the production and sale of Tommy Hilfiger branded footwear and designer of
the "Kalani" shoe.
You claim that JBTL possesses common law rights in a stripe design, as shown and
described in two trademark applications filed in the United States Patent and Trademark Office
("PTO") under Serial Nos. 85/602452 and 85/602476. The claimed mark consists of a vertical
striped pattern on the inside lining of the shoe and a "three vertical stripe design" on the shoe rim
near the heel area. In addition, you refer to two design patents, U.S. D668,849 and D668,850.
You further claim that the use of a stripe design on the interior lining of the Tommy Hilfiger
Kalani shoes allegedly constitutes trade dress infringement, dilution and unfair competition
under federal and state law. You also claim "possible design patent infringement."
For the reasons set forth below, we disagree that the stripe design used inside the Kalani
shoe violates any claimed trademark, trade dress or design patent rights owned by JBTL.
First, as you implicitly acknowledge in your letter, your client's pending trademark
applications provide no substantive rights or evidentiary presumptions. Therefore, in order to
assert a trade dress or unfair competition claim, JBTL would frrst need to prove that its stripe
design is distinctive, such that purchasers recognize the design as an indication of source.
Demonstration of acquired distinctiveness, or secondary meaning, generally entails rigorous
proofs, including, proof of substantially exclusive and continuous use in commerce of a claimed
mark over a significant period of time. However, your client claims to have first used the stripe
7 Times Square, New York, New York 10036 Telephone: 212.790.4500 Fax: 212.790.4545
Albany 1 Los Angeles 1 New York 1 Orange County 1 Palo Alto 1 Sacramento 1 San Francisco I Washington, D.C.
manatt
manatt I phelps 1 phillips
Andrea Bates, Esq.
April 22, 2013
Page 3
design must necessarily include the visual elements pictured in the patent. Hence, the '849 .
patent is limited to a shoe with tassels on the front of the upper, a stripe design on one side of the
top ofthe upper and the name "CHARLES PHILIP" on the sole of the shoe. The '850 patent is
limited to a shoe with a leopard print design, a stripe pattern on one side of the top of the upper .
and the name 'CHARLES PHILIP' on the sole of the shoe. Since you do not in your letter, and
cannot, point to a Tommy Hilfiger shoe that includes all of these features, no claim for design
patent infringement can lie.
In view of the foregoing, continued assertion by JBTL of trademark/trade dress, unfair
competition, dilution or design patent infringement with respect to the Tommy Hilfiger Kalani
shoe would be utterly baseless. Accordingly, we consider this matter closed.
This letter is written with full reservation ofMBF Holdings LLC and Tommy Hilfiger
Licensing LLC's rights, remedies and defenses.
Very truly yours, /)
W ~ ~ u ~
Darren W. Saunders
cc: Simon Bock, Esq.
201366266.1
EXHIBIT J
Bates&Bates
Andrea Bates
LawFirrn HcDcfincd
VIA USPS AND EMAIL: DSaunders@manatt.com
Darren W Saunders
Trademark Counsel for MBF Holdings LLC
7 Times Square
New York, New York 1 0036
May 10, 2013
Re: Infringement of Charles Philip Trademarks by Tommy
Hilfiger's "Kalani" Shoe
Confidential Correspondence subject to Federal Rules of Evidence 408
Mr. Saunders,
As you know, we represent Jumbo Bright Trading Limited ("JBTL") with regard to
intellectual property matters. We are in receipt of your cease and desist response
correspondence dated April 22, 2013 ("Response") on behalf of MBF Holdings
LLC ("MBF"), the exclusive licensee of Tommy Hilfiger Licensing LLC for
production and sale of the Tommy Hilfiger "Kalani" shoe. Despite your claims to
the contrary, the Tommy Hilfiger "Kalani" shoe is infringing, as detailed below, on
the distinctive CHARLES PHILIP striped designs as described in trademark
applications U.S. Serial Nos. 85/602452 and 85/6022476. Specifically, JBTL
believes that Hilfiger's "Kalani" shoe infringes JBTL's common law trademark
rights.
You are correct in your interpretation of trademark law that an infringement claim
for an unregistered trademark requires a demonstration that the mark has
acquired a secondary meaning in that consumers recognize the mark as an
indication of source. JBTL is confident that the distinctive striped design has
acquired this secondary meaning, or acquired distinctiveness, in the eyes of the
consumer. Your reliance of the intermediate decision of a trademark attorney at
the USPTO is unfounded. You also claim that JBTL has not used the distinctive
striped designs exclusively but fail to :r:1 vte l:le

Einally, JBTL finds your argument that col) Q ers will not C!mfused
the Hilfiger "Kalani" shoe does not three verti r pes on the _nqe
rim near the heel area unpersuasive. " .,
Atlanta, GA 30318
404.228.7439 ext 104
to the USPTO can be significant. Therefore, to lower costs, it is in the client's
best interest to provide the USPTO with only the amount of evidence of a
secondary meaning necessary to approve the mark for publication. This often
takes several responses. There is certainly no judge that would hold that an
examiner's interim response of insufficient evidence to prove acquired
distinctiveness is somehow controlling or even persuasive. In addition, you claim
that JBTL will be unable to overcome the initial refusal because there is a
requirement that the mark be in substantially exclusive and continuous use for
five years preceding the date when the claim of distinctiveness is made. JBTL is
unaware of this requirement to register a trademark under an acquired
distinctiveness claim. You mention 37 C.F.R. 241(b) in your Response but this
section is only applicable if the applicant bases its argument for acquired
distinctiveness on one or more prior registrations, which JBTL does not. The
statutory five . year presumption of a secondary meaning has no relevance in
litigation of an unregistered mark. Sand Hill Advisors, LLC v. Sand Hill Advisors,
LLC, 680 F.Supp. 2d 1107 (N.D. Cal. 2010).
Instead of your interpretation, the substantially exclusive time period has no
bright line rule. Rather, courts treat the time period as only one factor to be taken
into account when examining the acquired distinctiveness claim. Courts have
found a trademark has acquired distinctiveness with a substantially exclusive
time period as short as five months. L.A. Gear, Inc. v. Thorn MeAn Shoe Co.,
988 F.2d 11.17 (Fed. Cir. 1993). JBTL's first use in the United States of the
distinctive striped design was July 8, 2010. The immediate positive reception of
. press in fashion magazines and department stores of the JBTL trademarks,
combined with significant sales, is proof of acquired distinctiveness. Although
you do not disclose the first use of the infringing Hilfiger "Kalani" shoe in your
Response, JBTL is confident that acquired distinctiveness can be demonstrated
before this use by MBF. At the very least, the presence of a secondary meaning
of the JBTL trademarks is a fact question that will need to be examined by the
court after extensive discovery.
In your Response, you claim that JBTL has not had substantially exclusive use of
the distinctive striped design. You provide no basis for this conclusion other than
that "Tommy Hilfiger has long used this design, known as the 'Ithaca Stripe' on
attire and accessories, among other products, for many years, and well before
your client's claimed date of first use." It is unclear from this paragraph whether
you are claimin!;fpriority of use with shoes of the distinctive striped design. If this
is the case,. ple,ase clarify and provide evidence of substantially exclusive use.
Whethe( Hilfiger has used the distinctive striped design on products other than
shoes has no bearing on this issue. As all trademark attorneys know, protection
of a trademark through an infringement action requires a product. JBTL does not
claim exclusive rights to the distinctive striped design on all products but rather,
as stated in the trademark applications, shoes. The substantially exclusive use
by JBTL can be demonstrated on English style loafers such as the Tommy
Hilfiger "Kalani" shoe. If you have proof to the contrary, please provide this.
Please note that the Lanham Act does not require absolute exclusive use but
rather substantially exclusive use. The term "substantially" exclusive use makes
allowance for minor uses and infringing uses. L.D. Kichler Co. v. Davoil, Inc.,
192 F.3d 1349 (Fed. Cir. 1999).
You claim that because the Hilfiger "Kalani" shoe does not contain the three
vertical stripe design on the shoe rim near the heel area there can be no
consumer confusion. The Lanham Act does not require the marks to be identical
for a claim of trademark infringement to succeed. Instead, the courts use
multiple factors when determining whether there is a likelihood of confusion. For
example, the 9th Circuit uses an eight (8) factor test to determine whether the
infringer's mark is likely to cause confusion. Often referred to as the Sleekcraft
factors, the factors include: 1) the similarity of the marks; 2) the strengths of the
plaintiff's mark; 3) the proximity of the relatedness of the goods or services; 4)
the defendant's intent on selecting the mark; 5) evidence of actual confusion; 6)
the marketing channels used; 7) the likelihood of expansion into other markets;
and 8) the degree of care likely to be exercised by purchasers. AMF v.
Sleekcraft Boats, 599 F .2d 341 , 348-49 (9th Cir. 1979). This list is not
exhaustive and no single factor is outcome determinative. ld.
There is a strong likelihood that any court, especially the 9th Circuit, would rule in
JBTL's favor by weighing the S/eekcraft factors. In judging similarity, the 9th
Circuit will consider the appearance of the marks in their entirety and as they
appear in the marketplace. GoTo.com, Inc. v. Walt Disney Co., 202 F.3d 1199
(9
1
h Cir. 2000). The court will also give more weight to the similarities in the
marks as opposed to the differences. lQ. at 1206. The three vertical stripe
design is an insignificant portion of the overall trademark claimed by JBTL and
certainly not enough of a distinction to prevent consumer confusion. In addition
to the similarity of the marks factor, an analysis of all the remaining Sleekcraft
factors show there is not only a potential for consumer confusion but a strong
likelihood.
To summarize the above, JBTL believes the Hilfiger "Kalani" shoe will likely
cause consumer confusion in the marketplace and erode the value of JBTL's
trademarks. As such, JBTL requires that MBF immediately discontinue
manufacturing, selling and/or advertising these shoes. In addition, MBF must
provide an accounting of the Hilfiger "Kalani" shoes that have been sold using the
distinctive striped design confusingly similar to the JBTL trademarks so
settlement options may be discussed.
I look forward to receiving your response with regard to this matter so we can
conclude settlement.
This letter is sent without prejudice to JBTL's rights and claims, all of which are
expressly reseNed.
Regards,
Andrea E Bates
EXHIBITK
manatt
manatt 1 phelps I phillips
June 13, 2013
VIA EMAIL AND FIRST CLASS MAIL
Andrea Bates, Esq.
Bates & Bates
Re: Tommy Hilfiger "Kalani" Shoe
Dear Ms. Bates:
Darren W Saunders
Direct Dial: (212) 790-4600
E-mail: DSaunders@manatt.com
Further to our exchange of e-mails on May 31, 20 13, we are responding to your letter of
May 10, 2013, in which you have either mischaracterized or misunderstood certain points made
in our April22, 2013 letter.
With regard to the office action, we did not state nor do we contend that an interim office
action from the USPTO is controlling on the issue of secondary meaning. However, the USPTO
possesses unique expertise in this area and the examiner's comments regarding your client's
failure to prove secondary meaning are highly persuasive on the issue. The examiner sets forth
the reasons why Jumbo Bright Trading Limited's ("JBTL") claim of acquired distinctiveness is
not accepted, and these same reasons would most certainly be applicable in the context of any
litigation brought under the Lanham Act.
In addition, you are incorrect that 37 C.F.R. 2.41.(b) is only applicable if the applicant
bases its argument for acquired distinctiveness on one or more prior registrations. This section
also provides that five years of substantially exclusive and continuous use of a mark in
commerce, in appropriate cases, can be prima facie evidence of distinctiveness. This is the
measuring stickutilized by the USPTO and most courts for determining acquired distinctiveness,
particularly with respect to a common design such as your client's. I n d e e d ~ the examiner cited
this section of the C.F.R. in the office action in connection with its refusal and noting that
"applicant has not been using its mark for a significant period of time." The point here,
correctly made by the USPTO, is, in view ofthe simplicity of your client's striped design, three
years is not a significant period of time in which to establish secondary meaning.
Further, the L.A. Gear case cited in your letter is entirely inapposite. Among other
things, L.A. Gear concerned the total appearance, or trade dress, of a shoe and not merely an
ornamental interior lining. As the Federal Circuit noted, the shoe in L.A. Gear gained immediate
7 Times Square, New York, New York 10036 Telephone: 212.790.4500 Fax: 212.790.4545
Albany I Los Angeles 1 New York 1 Orange County 1 Palo Alto 1 Sacramento 1 San Francisco I Washington, D.C.
manatt
manatt I phelps I phillips
Andrea Bates, Esq.
June 13, 2013
Page 2
popularity and under the extraordinary circumstances, "public demand for this [shoe] design was
shown, by sales figures, to have been rapidly achieved." Here, even if your client's advertising
expenditures and sales figures for the shoe were considered to be extensive- which is highly
questionable - this does not mean that the striped interior lining of the shoe has acquired
secondary meaning, or for that matter, is recognized by consumers as anything other than mere
ornamentation.
With regard to your inquiry as to whether Tommy Hilfiger has used the Ithaca stripe on
footwear, and if such use was prior to JBTL, attached is a catalog excerpt from the Tommy
Hilfiger Women's Spring 2007 collection. As you can see, the Ithaca stripe - from which the
Charles Philip stripe pattern is virtually indistinguishable - was used for the interior lining for
at least one style from this collection. Other examples can be provided if necessary. However,
these shoes, as well as other third-party uses of extremely similar designs for the interior lining
for footwear, are in direct contravention to your client's claim of distinctiveness and secondary
mearung.
We note that your comments regarding the costs associated with demonstrating
secondary meaning and providing the USPTO with "only the amount of evidence of a secondary
meaning necessary to approve the mark for publication," suggest that you have additional
claimed evidence of secondary meaning. You are free to provide it to us for our consideration if
you wish. Otherwise, we stand by all of the points in our April 22, 2013 letter, ill which we
concluded that JBTL does not own protectable common law trademark rights to its striped
design.
In view ofthe foregoing, we see no point in engaging in an analysis of the Sleekcraft
factors. We wish to point out that the prominent use of the famous Tommy Hilfiger
brand name and trademark on the insole of the Kalani shoe makes clear to consumers that the
shoe is a Tommy Hilfiger shoe, and therefore any consumer confusion is highly unlikely.
manatt
manatt I phelps I phillips
Andrea Bates, Esq.
June 13, 2013
Page 3
In sum, for the reasons expressed in our April 22, 2013 letter and herein, our client will
not agree to discontinue manufacturing, selling and advertising the Tommy Hilfiger Kalani
shoes.
v ; : Q ; : : J ~
Darren W Saunders
Enclosure
201616655.1
EXHIBIT L
r " .
BatesCBates
INTELLECTUAL PROPERTY LAW
VIA USPS AND E-MAIL
Darren W Saunders
Trademark Counsel for MBF Holdings LLC
7 Times Square
New York, New York 1 0036
July 16, 2013
Re: Infringement of Charles Philip Trademarks by Tommy Hilfiger's
"Kalani" Shoe
Confidential Correspondence subject to Federal Rules of Evidence 408
Dear Mr. Saunders,
We are in receipt of your cease and desist response correspondence dated June 12,
2013 ("2nd Response") on behalf of MBF Holdings LLC ("MBF"), the exclusive licensee of
Tommy Hilfiger Licensing LLC for production and sale of the Tommy Hilfiger "Kalani"
shoe. This 2nd Response was in regards to a letter sent on May 1 O 2013 in answer to
your response to a cease and desist letter dated March 25, 2013 sent by us on behalf of
Jumbo Bright Trading Limited ("JBTL"). The Tommy Hilfiger "Kalani " shoe is infringing
on the distinctive CHARLES PHILIP striped designs as described in trademark
applications U.S. Serial Nos. 85/602452 and 85/6022476. Specifically, JBTL believes
that Hilfiger's "Kalani" shoe infringes JBTL's common law trademark rights. Further, as
JBTL holds design patents, they' too may be at issue in this case.
In your 2nd Response, you provide additional reasons why the CHARLES PHILIP striped
designs have not acquired a: secondary meaning. Your arguments are unpersuasive;
there is little doubt that the CHARLES PHILIP marks have acquired a secondary
meaning and JBTL is willing to prove this through litigation.
First, the arguments you provide are based upon an USPTO interim office action and 37
C.F.R. 2.41 (b). You admit that the office action refusal is not controlling on the issue
of secondary meaning. However, you claim that the examiner's comments are highly
persuasive regarding JBTL's failure to prove secondary meaning. While the same
arguments (as the examiner's comments) would be applicable in the context of
trademark litigation, an interim office action is hardly persuasive. JBTL is currently
preparing evidence of a secondary meaning and will submit this evidence to the USPTO.
Your interpretation of 37 C.F.R. 2.41 (b) is incorrect. You state that this section
provides that five years of substantially exclusive and continuous use of a mark in
commerce can be prima facie evidence of distinctiveness. JBTL agrees with that
ATLANTA I 1890 Marietta Boulevard NW, Atlanta, GA 30318
404.228.7439 I 866.701.0404 I www. bates-bates.com
LOS ANGELES I IOWA CITY I WASHINGTON
statement but it is illogical to derive that the absence of the five years of use is prima
facie evidence that there is not distinctiveness. JBTL disagrees that most courts will use
this five year mark as a measuring stick. In fact , as stated in earlier correspondence, the
statutory five year presumption of a secondary meaning has no relevance in litigation of
an unregistered mark. Sand Hill Advisors, LLC v. Sand Hill Advisors, LLC, 680 F.Supp.
2d 1107 (N.D. Cal. 201 0). While JBTL is aware that certain courts have adopted this
five year presumption, despite that the statute only allowing use by the USPTO,
however, JBTL is unaware of any court relying on 37 C.F.R. 2.41 (b) to state that less
than five years of exclusive and continuous use of a mark in commerce creates a
presumption that the mark lacks distinctiveness.
Your attempt to differentiate the L.A. Gear case is also unpersuasive. As stated in
earlier correspondence, L.A. Gear found that the trade dress of a shoe had acquired
distinctiveness with a substantially exclusive time period of five months. L.A. Gear, Inc.
v. Thorn MeAn Shoe Co. , 988 F.2d 1117 (Fed. Cir. 1993). You separate L.A. Gear from
the current issue by stating it concerned the total appearance, not an ornamental interior
lining of the shoe. This is a distinction without a difference as the important aspect is
whether the trade dress in question is being used to identify the origin. The striped lining
on the inside of the CHARLES PHILIP loafer is obviously not merely ornamental but
being used to identify Charles Philip as the designer.
Lastly, you provide a catalog except from the Tommy Hilfiger Women's Spring 2007
collection which shows two pair of shoes using a similar striped pattern. These shoes
provide no guidance for the current controversy. Not only is there no proof they were on
the market when the CHARLES PHILIP loafers were introduced in 2010, but there is
also no evidence of the striped pattern being used as a trademark to signify the origin.
To the contrary, the striped design is used on every loafer designed by Charles Philip
and prominently displayed in all of the advertising for the Charles Philip loafers. See
www.charlesphilipshanghai.com. In addition, JBTL has policed the marketplace for
others attempting to capitalize on the goodwill built up in the striped designs. This
patrolling includes numerous cease and desist letters along with a trademark
infringement suit being brought against GAP, Inc. and its unauthorized use of the striped
design. See Jumbo Bright Trading Limited v. The GAP, INC., No. CV 12-08932 DDP
(MANx).
As far as consumer confusion, there is little doubt the nearly identical striped design
being used by the "Kalani" loafers will likely cause confusion. Despite your claims, the
use of the Tommy Hilfiger label will not assuage this likelihood of confusion. Labels may
help to dispel but "labeling of a product will not automatically alleviate a likelihood of
confusion." Sunbeam Products, Inc. v. West Bend Co., 123 F.3d 246, 259 (5th Cir.
1997). Courts have consistently found a likelihood of consumer confusion despite
labeling by the defendant. See Source Perrier. S.A. v. Waters of Saratoga Springs, Inc.,
217 U.S.P.Q. 617 (S.D.N.Y. 1982); Nabisco Brands, Inc. v. Conusa Corp., 722 F.Supp
1287 (M.D.N.C. 1989); Keds Corp. v. Renee International Trading Corp., 888 F.2d 215
(1 st Cir. 1989); McNeii-PPC v. Guardian Drug Co., 984 F.Supp 1066 (E.D. Mich. 1997);
Aris-lsotoner Gloves, Inc. v. Fownes Bros. & Co., 594 F.Supp. 15 (S.D.N.Y. 1983); PAF
S.r.l. v. Lisa Lighting Co. , 712 F.Supp. 394 (S.D.N.Y. 1989); Ferrari S.p.A. Esercizio
Automobile E Corse v. Roberts, 944 F.2d 1235 (6th Cir. 1991 ); and Life Indus. Corp. v.
Star Brite Distrib., Inc. , 803 F.Supp 646 (E.D.N.Y. 1992). Like the infinite number of
cases where labeling has been found insufficient to alleviate the likelihood of consumer
confusion, it is unlikely a court will find the labeling of the loafers enough.
The striped design on the interior of the CHARLES PHILIP loafers is the main way that
Charles Philip has notified the public that the loafer was designed by him. As I am sure
you are aware, this is his designer "mark" and JBTL has been in the past and is still
willing to litigate to protect the exclusivity and goodwill that Charles Philip has created in
the striped design. Please inform on whether your client wishes to continue using the
distinctive blue and white stripes in their loafers as JBTL will need to evaluate all legal
remedies available to it. If not, JBTL requires that MBF immediately discontinue
manufacturing, selling and/or advertising these shoes.
I look forward to receiving your prompt response with regard to this matter.
This letter is sent without prejudice to JBTL's rights and claims, all of which are
expressly reserved.
Regards,
f t z L ? ~
AndreaE Bates

Tommy Hilfiger v. Jumbo Bright - Complaint

Uploaded by

Document Information

Copyright

Available Formats

Share this document

Share or Embed Document

Sharing Options

Did you find this document useful?

Is this content inappropriate?

Copyright:

Available Formats

Tommy Hilfiger v. Jumbo Bright - Complaint

Uploaded by

Copyright:

Available Formats

Case 1:13-cv-06386-NRB Document 1 Filed 09/11/13 Page 1 of 13

You might also like