Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA936780 Filing date: 11/21/2018

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD Notice of Opposition

Notice is hereby given that the following party opposes registration of the indicated application. Opposer Information

Name Gabrielle Studio, Inc. Granted to Date 11/25/2018 of previous ex- tension Address 512 Seventh Avenue New York, NY 10018 UNITED STATES

Attorney informa- Robert J. English tion Cowan, Liebowitz & Latman, P.C. 114 West 47th Street New York, NY 10036 UNITED STATES [email protected], [email protected], [email protected], [email protected] 212-790-9200

Applicant Information

Application No 87752176 Publication date 05/29/2018 Opposition Filing 11/21/2018 Opposition Peri- 11/25/2018 Date od Ends Applicant Everbeauty Inc. 10 Henry Street Teterboro, NJ 07608 UNITED STATES Goods/Services Affected by Opposition

Class 003. First Use: 0 First Use In Commerce: 0 All goods and services in the class are opposed, namely: Cosmetics; Non-medicated skin care pre- parations, namely, creams, lotions, gels,toners, cleaners and peels Grounds for Opposition

Priority and likelihood of confusion Trademark Act Section 2(d) Marks Cited by Opposer as Basis for Opposition

U.S. Registration 1554808 Application Date 08/24/1988 No. Registration Date 09/05/1989 Foreign Priority NONE Date Word Mark DKNY Design Mark Description of NONE Mark Goods/Services Class 025. First use: First Use: 1988/08/12 First Use In Commerce: 1988/08/12 WOMEN'S APPAREL; NAMELY, DRESSES, SKIRTS, SWEATERS, JACKETS, PANTS, TRENCH COATS AND BODY SUITS

U.S. Registration 1586768 Application Date 07/24/1989 No. Registration Date 03/13/1990 Foreign Priority NONE Date Word Mark DKNY Design Mark Description of NONE Mark Goods/Services Class 018. First use: First Use: 1989/01/06 First Use In Commerce: 1989/01/06 HANDBAGS, CLUTCH PURSES, SHOPPING BAGS MADE OF LEATHER, POUCHES, TOTE BAGS, WEEKENDER BAGS, COSMETIC BAGS SOLD EMPTY, BACKPACKS, ATTACHES, SATCHELS, BELT BAGS,WALLETS, BUSINESS CARD CASES AND TRAVELKITS SOLD EMPTY

U.S. Registration 1607425 Application Date 10/02/1989 No. Registration Date 07/24/1990 Foreign Priority NONE Date Word Mark DKNY Design Mark Description of NONE Mark Goods/Services Class 014. First use: First Use: 1989/01/06 First Use In Commerce: 1989/01/06 JEWELRY, NAMELY, EARRINGS, BRACELETS, NECKLACES, [PINS], PENDANTS, AND [CHATELAINES]

U.S. Registration 1646910 Application Date 08/21/1990 No. Registration Date 06/04/1991 Foreign Priority NONE Date Word Mark DKNY Design Mark Description of NONE Mark Goods/Services Class 025. First use: First Use: 1989/03/00 First Use In Commerce: 1989/03/00 T-shirts

U.S. Registration 1784213 Application Date 11/05/1992 No. Registration Date 07/27/1993 Foreign Priority NONE Date Word Mark DKNY DONNA KARAN NEW YORK Design Mark

Description of NONE Mark Goods/Services Class 025. First use: First Use: 1988/08/12 First Use In Commerce: 1988/08/12 clothing; namely, trenchcoats, jackets,dresses, belts, scarves, gloves, , skirts, pants, sweaters, hats, caps, [ neckties, ] [ascots,] T-shirts [ andshoes ]

U.S. Registration 1951022 Application Date 01/27/1995 No. Registration Date 01/23/1996 Foreign Priority NONE Date Word Mark DKNY Design Mark Description of NONE Mark Goods/Services Class 016. First use: First Use: 1989/11/00 First Use In Commerce: 1989/11/00 patterns for home sewing and knitting

U.S. Registration 1958158 Application Date 06/21/1995 No. Registration Date 02/20/1996 Foreign Priority NONE Date Word Mark DKNY Design Mark Description of NONE Mark Goods/Services Class 009. First use: First Use: 1989/04/19 First Use In Commerce: 1989/04/19 eyeglass frames, eyeglass cases, [eyeglass chains, non-prescription magnifying eyeglasses] and sunglasses

U.S. Registration 2203071 Application Date 06/09/1995 No. Registration Date 11/10/1998 Foreign Priority NONE Date Word Mark DKNY Design Mark Description of NONE Mark Goods/Services Class 042. First use: First Use: 1998/03/22 First Use In Commerce: 1998/03/22 retail store services featuring cosmetics, toiletries, fragrances, clothing, footwear and accessories U.S. Registration 2358744 Application Date 05/19/1997 No. Registration Date 06/13/2000 Foreign Priority NONE Date Word Mark DKNY Design Mark

Description of NONE Mark Goods/Services Class 003. First use: First Use: 1999/09/17 First Use In Commerce: 1999/09/17 eau de perfume

U.S. Registration 2470110 Application Date 09/17/1998 No. Registration Date 07/17/2001 Foreign Priority NONE Date Word Mark DKNY Design Mark

Description of NONE Mark Goods/Services Class 025. First use: First Use: 1988/08/12 First Use In Commerce: 1988/08/12 CLOTHING FOR MEN, WOMEN AND CHILDREN, NAMELY, COATS, RAIN- COATS, ANORAKS, PARKAS, BLAZERS, JACKETS, CARDIGANS, BOLER- OS, SPORT COATS, WIND RESISTANT JACKETS, SUITS, [ TUXEDOS, ] VESTS, DRESSES, [EVENING GOWNS,] JUMPERS, SKIRTS,, PANTS, SLACKS, TROUSERS, JEANS, [ DUNGAREES,] JUMPSUITS, [ OVERALLS, COVERALLS, FLIGHT SUITS, GYM SUITS, JOGGING SUITS, ] SWEAT PANTS, [ THERMAL UNDERWEAR,] SHORTS, SKORTS, ROMPERS, CU- LOTTES, [ SHORTALLS,] SHIRTS, SWEATERS, JERSEYS, BLOUSES, TU- NICS, SWEATSHIRTS, T-SHIRTS, HALTER TOPS, TANK TOPS, BODY- SUITS, UNITARDS, , , , SLIPS, FOUNDATION GARMENTS, BODYSHAPERS,, BRASSIERES, ,[ BELTS,] , , [ BLOOMERS,] UNDERPANTS, , , LOUNGEWEAR, [ NIGHTGOWNS,] , , ROBES, PAJAMAS,,, , , , , [ LEG WARMERS,] , , HEAD WEAR, HATS, CAPS,[ HOODS, HEAD BANDS,] NECKTIES,[ BOW TIES, ASCOTS, POCKET SQUARES,] SCARVES, SHAWLS, NECKERCHIEFS, GLOVES, MITTENS, BELTS, SASHES, [ CUMMERBUNDS,] SHOES, FOOTWEAR, BOOTS, ATH- LETIC SHOES, ATHLETIC FOOTWEAR,, [ GALOSHES,] SWIMWEAR, BATHING SUITS, [ BATHING TRUNKS, ]BEACHWEAR, BEACH COVERUPS, SARONGS, [SKI WEAR, SKI SUITS, S, SKI PANTS, SKI GLOVES, THERMAL SOCKS,], INFANT WEAR,, S, [ BIBS, BOOTIES, BABY BUNTING, PLAYSUITS ]

U.S. Registration 2579723 Application Date 03/07/2000 No. Registration Date 06/11/2002 Foreign Priority NONE Date Word Mark DKNY JEANS Design Mark

Description of NONE Mark Goods/Services Class 035. First use: First Use: 1998/09/26 First Use In Commerce: 1998/09/26 RETAIL STORE SERVICES FEATURING [ COSMETICS, TOILETRIES, AND FRAGRANCES; ] CLOTHING [ AND FOOTWEAR; ACCESSORIES; LUGGAGE; AND HOUSEWARES ]

U.S. Registration 2579817 Application Date 04/13/2000 No. Registration Date 06/11/2002 Foreign Priority NONE Date Word Mark DKNY JEANS Design Mark

Description of NONE Mark Goods/Services Class 018. First use: First Use: 2002/01/10 First Use In Commerce: 2002/01/10 HANDBAGS, SHOULDER BAGS, [ COSMETIC BAGS SOLD EMPTY, LEATH- ER SHOULDER BELTS, GROOMING KITS SOLD EMPTY, WALLETS, CREDIT CARD CASES, BUSINESS CARD CASES, KEY CASES, COIN PURSES, CLUTCH PURSES; GENERAL-PURPOSE PURSES, POUCHES, BELT BAGS, ] TOTE BAGS [ , SADDLE BAGS, ROLL BAGS, SLING BAGS, TRAVEL BAGS, OVERNIGHT BAGS, DUFFLE BAGS, SUIT BAGS, GARMENT BAGS FOR TRAVEL, GYM BAGS, TIE CASES, BACKPACKS, ATTACHES, SATCHELS, SUITCASES, TRUNKS; UMBRELLAS ] U.S. Registration 2594717 Application Date 03/02/1999 No. Registration Date 07/16/2002 Foreign Priority NONE Date Word Mark DKNY Design Mark Description of NONE Mark Goods/Services Class 014. First use: First Use: 1989/01/06 First Use In Commerce: 1989/01/06 [ (( JEWELRY MADE OF PRECIOUS METAL OR COATED THEREWITH, NAMELY, ] ANKLE [ BRACELETS,] [ IDENTIFICATION BRACELETS, BRACE- LETS, BELT BUCKLES, BROOCHE'S, CHAINS, CHARMS, EAR CLIPS, ] [ CUFF LINKS,] [ EARRINGS, SHOE ORNAMENTS, MONEY CLIPS, NECK- LACES, ORNAMENTAL PINS, PENDANTS, RINGS, WEDDING BANDS, MEDALLIONS; COSTUME JEWELRY; ] )) HOROLOGICAL AND OTHER CHRONOMETRIC INSTRUMENTS, [ PARTS AND ACCESSORIES THEREOF, ] NAMELY, WRIST WATCHES, STOP WATCHES, [ WATCH FOBS, POCKET WATCHES,WATCH BANDS, WATCH STRAPS, WATCH BRACELETS, WATCH CHAINS, ] WATCH CASES, [ WALLCLOCKS, TABLE CLOCKS, ALARM CLOCKS, CLOCKS INCORPORATING RADIOS, ] [(( CHRONOMET- ERS, CHRONOGRAPHS,] [ DECORATIVE ITEMS FOR THE HOME MADE OF PRECIOUS METAL OR COATED THEREWITH, NAMELY, BOWLS, SERVING PLATTERS, SERVING TRAYS, PLATE CHARGERS,JUGS, PLATES, MUGS, VASES, CACHE POTS, ICE BUCKETS, CANISTERS, CRUETS, PENCIL BOXES, PENCIL CUPS, LETTER OPENERS, DESK TRAYS, SERVING TRAYS, DECORATIVE TRAYS, CANDLESTICKS, CANDELABRAS, CANDLE HOLDERS, CANDLE RINGS, CANDLE SNUFFERS, CANDLETRAYS, DECOR- ATIVE BOXES, JEWELRY BOXES,JEWELRY CASES, PICTURE FRAMES, DECORATIVE STANDS, DECORATIVE PEDESTALS, CIGARETTE CASES, CIGARETTE BOXES, CIGARETTE HOLDERS, CIGARETTE LIGHTERS, ASH- TRAYS, NUTCRACKERS, COFFEE POTS, COFFEE SERVICES, TEA POTS, TEA SERVICES, TEA BALLS, TEA INFUSERS, SERVIETTE RINGS, NAPKIN RINGS; WORKS OF ART MADE OF PRECIOUS METAL OR COATED THERE- WITH, NAMELY, BUSTS, FIGURINES, STATUES, STATUETTES, SCULP- TURE ] ))

U.S. Registration 2601327 Application Date 05/19/1997 No. Registration Date 07/30/2002 Foreign Priority NONE Date Word Mark DKNY Design Mark Description of NONE Mark Goods/Services Class 003. First use: First Use: 2000/02/00 First Use In Commerce: 2000/02/00 [body cream;] body lotion; body cleanser; body exfoliating preparation;[ hair shampoo; hair conditioner;] eau de toilette; perfume; fragrance body lotion; [fragrance body cream;] skin cleansing lotion; skin cleansing gel; [shaving foam; pre-shave preparations;] after shave lotions and gels;[ after shave balm;] anti- perspirant/deodorant; [; essential oils for personal use]

U.S. Registration 2636433 Application Date 05/10/2000 No. Registration Date 10/15/2002 Foreign Priority NONE Date Word Mark DKNY Design Mark

Description of NONE Mark Goods/Services Class 024. First use: First Use: 2001/01/00 First Use In Commerce: 2001/01/00 BED COVERS, NAMELY BED BLANKETS, DUVETS, THROWS AND QUILTS; BED LINENS, NAMELY BED SHEETS, PILLOW CASES, COMFORTER COV- ERS, DUVET COVERS, SHAMS AND BED SKIRTS; BATH LINENS, NAMELY FACE TOWELS, HAND TOWELS, BODY TOWELS, FACE CLOTHS, BATH SHEETS AND BATH MATS MADE OF TEXTILE

U.S. Registration 2992294 Application Date 07/01/2004 No. Registration Date 09/06/2005 Foreign Priority NONE Date Word Mark DKNY JEANS Design Mark

Description of NONE Mark Goods/Services Class 025. First use: First Use: 1995/01/15 First Use In Commerce: 1995/01/15 PANTS, JEANS, SHORTS, JUMPERS, DRESSES,SKIRTS, T-SHIRTS, SHIRTS, BLOUSES, JACKETS, BLAZERS, CARDIGANS, TRENCH COATS, DUSTERS, VESTS, [ CAMISOLES, ] ANORAKS, [BODYSUITS, ] OVERALLS, SWEATSHIRTS, [ SWIMWEAR, ] SKORTS, AND SWEATERS

U.S. Registration 3086192 Application Date 11/26/2003 No. Registration Date 04/25/2006 Foreign Priority NONE Date Word Mark DKNY DONNA KARAN NEW YORK Design Mark

Description of NONE Mark Goods/Services Class 009. First use: First Use: 2005/06/01 First Use In Commerce: 2005/06/01 EYEGLASS FRAMES [, EYEGLASS CASES ] AND SUNGLASSES Class 014. First use: First Use: 2005/06/01 First Use In Commerce: 2005/06/01 [ HOROLOGICAL AND OTHER CHRONOMETRIC INSTRUMENTS, NAMELY, WRIST WATCHES ] Class 018. First use: First Use: 2005/06/01 First Use In Commerce: 2005/06/01 HANDBAGS, CLUTCH PURSES, SHOPPING BAGS MADE OF LEATHER, POUCHES, TOTEBAGS, TRAVEL BAGS, COSMETIC BAGS SOLD EMPTY, BACKPACKS, ATTACHES, SATCHELS, BELT BAGS, WALLETS AND TOI- LETRY CASES SOLD EMPTY Class 025. First use: First Use: 2005/06/01 First Use In Commerce: 2005/06/01 CLOTHING FOR MEN, WOMEN AND CHILDREN, NAMELY, COATS, RAIN- COATS, ANORAKS, PARKAS, BLAZERS, JACKETS, CARDIGANS, [ BOLER- OS, ] SPORT COATS, WIND RESISTANT JACKETS,SUITS, VESTS, DRESSES, [EVENING GOWNS,]JUMPERS, SKIRTS, PANTS, SLACKS, TROUSERS, JEANS, DUNGAREES, JUMPSUITS, [ OVERALLS, COVERALLS ], GYM SUITS, JOGGING SUITS, SWEAT PANTS, [ THERMAL UNDERWEAR, ] SHORTS, SKORTS, ROMPERS, [ SHORTALLS, ] SHIRTS, SWEATERS, JERSEYS, BLOUSES, TUNICS, SWEATSHIRTS, T-SHIRTS, HALTER TOPS, TANK TOPS, BODYSUITS, UNITARDS, CAMISOLES, CHEMISES, UNDER- SHIRTS, SLIPS, FOUNDATION GARMENTS, [ BODYSHAPERS, ] BRASSI- ERES, [ BUSTIERS, BRIEFS, BOXER SHORTS, UNDERPANTS, PANTIES, ] LINGERIE, LOUNGEWEAR,NIGHTGOWNS, NIGHT SHIRTS, NEGLIGEES, ROBES, PAJAMAS, HOSIERY, PANTYHOSE, TIGHTS, KNEE HIGHS, ] LEG- GINGS, [ SOCKS, HEAD WEAR, HATS, CAPS, [HOODS,] [ HEAD BANDS,] NECKTIES, [ BOW TIES, ] [POCKET SQUARES,] SCARVES, SHAWLS, NECKERCHIEFS, GLOVES, MITTENS, BELTS, SASHES, [CUMMERBUNDS,] SHOES, FOOTWEAR, BOOTS, ATHLETIC SHOES, ATHLETIC FOOTWEAR, GALOSHES, SWIMWEAR, BATHING SUITS, [ BATHING TRUNKS, ] BEACH- WEAR, BEACH COVERUPS, [ SARONGS, ] [SKI WEAR, SKI SUITS, SKI PANTS, SKI GLOVES, THERMAL SOCKS,] INFANT WEAR, BOOTIES, PLAY- SUITS

U.S. Registration 3187361 Application Date 03/06/2006 No. Registration Date 12/19/2006 Foreign Priority NONE Date Word Mark PUREDKNY Design Mark

Description of NONE Mark Goods/Services Class 025. First use: First Use: 2005/09/30 First Use In Commerce: 2006/03/01 CLOTHING, NAMELY, COATS, BLAZERS, JACKETS, VESTS, DRESSES, SKIRTS, PANTS, TROUSERS, JEANS, SWEATPANTS, SWEATSHIRTS, [ POLO SHIRTS, ] SHORTS, SWEATERS, PULLOVERS, SHIRTS, BLOUSES, SHELLS, SHRUGS, TUNICS, T-SHIRTS, [ HALTER TOPS, ] TANK TOPSAND CAMISOLES; [ FOOTWEAR, NAMELY, SHOES, SANDALS, AND SLIPPERS ]

U.S. Registration 3345619 Application Date 11/11/2005 No. Registration Date 11/27/2007 Foreign Priority NONE Date Word Mark DKNY RED DELICIOUS Design Mark

Description of NONE Mark Goods/Services Class 003. First use: First Use: 2006/02/01 First Use In Commerce: 2006/02/01 Bath gels; Bath lotion; Cologne; Non-medicated bath preparations; Perfume

U.S. Registration 3676442 Application Date 03/16/2009 No. Registration Date 09/01/2009 Foreign Priority NONE Date Word Mark DKNY Design Mark

Description of The mark consists of a repeating pattern comprised of "DKNY" in stylized letter- Mark ing such that the letter "K" appears after the letter "D" in superscript position; the letter "Y" appears after the letter "N" in superscript position; and the letters "N" and "Y" appear below and overlap the letters "D" and "K". Goods/Services Class 018. First use: First Use: 2003/06/00 First Use In Commerce: 2003/06/00 HANDBAGS, COSMETIC BAGS, SOLD EMPTY, TOTES, WALLETS, COIN PURSES, BUSINESS CARDCASES Class 025. First use: First Use: 2003/06/00 First Use In Commerce: 2003/06/00 FOOTWEAR, BELTS, HATS, CAPS [, BASEBALL CAPS, CRUSHERS ]

U.S. Registration 3720002 Application Date 02/15/2008 No. Registration Date 12/01/2009 Foreign Priority NONE Date Word Mark DKNYC Design Mark

Description of NONE Mark Goods/Services Class 025. First use: First Use: 2008/03/00 First Use In Commerce: 2008/03/00 COATS, [ RAINCOATS, PARKAS, ] BLAZERS, JACKETS, CARDIGANS, [ WIND RESISTANT JACKETS, HOODED TOPS, ] KNIT TOPS, VESTS, DRESSES, SKIRTS, PANTS, SHORTS, SWEATERS,SHIRTS, BLOUSES, T- SHIRTS, HALTER TOPS,TANK TOPS, [ BODYSUITS, ] CAMISOLES, SCARVES, SHAWLS [, SHOES, SANDALS, BOOTS ]

U.S. Registration 3742524 Application Date 03/25/2004 No. Registration Date 01/26/2010 Foreign Priority NONE Date Word Mark DKNY BE DELICIOUS Design Mark

Description of NONE Mark Goods/Services Class 003. First use: First Use: 2004/09/30 First Use In Commerce: 2004/09/30 Perfumes and colognes; scented bath andbody products, namely, body washes [, body scrubs, bath soaps, bath salts ]

U.S. Registration 3857399 Application Date 07/18/2008 No. Registration Date 10/05/2010 Foreign Priority NONE Date Word Mark THE DKNY COZY Design Mark

Description of NONE Mark Goods/Services Class 025. First use: First Use: 2002/07/00 First Use In Commerce: 2002/07/00 KNITWEAR, NAMELY, KNIT TOPS

U.S. Registration 3881726 Application Date 01/14/2005 No. Registration Date 11/23/2010 Foreign Priority NONE Date Word Mark DKNY BE DELICIOUS 100% PURE NEW YORK Design Mark

Description of The mark consists of an oval design with the letters "DKNY" at the top of the Mark oval, the wording "BE DELICIOUS" in the middle of the oval, placed in between twoblack horizontal lines, and the wording"100% PURE NEW YORK" at the bot- tom of the oval. The colors black, white and gray represent background, out- lining, shading and/or transparent areas and are not part of the mark. Goods/Services Class 003. First use: First Use: 2004/09/30 First Use In Commerce: 2004/09/30 Perfumes and colognes; scented bath andbody products, namely, body lotions andcremes, body washes, body scrubs, bath soaps, bath salts

U.S. Registration 4435041 Application Date 10/19/2012 No. Registration Date 11/19/2013 Foreign Priority NONE Date Word Mark DKNY Design Mark

Description of NONE Mark Goods/Services Class 009. First use: First Use: 2009/02/00 First Use In Commerce: 2009/02/00 CARRYING CASES AND PROTECTIVE COVERS FOR PERSONAL ELEC- TRONIC DEVICES, NAMELY, CELL PHONES, MP3 PLAYERS, PERSONAL DIGITAL ASSISTANTS, TABLET COMPUTERS, LAPTOPS AND ELECTRON- IC READING DEVICES

U.S. Registration 4625225 Application Date 07/19/2011 No. Registration Date 10/21/2014 Foreign Priority NONE Date Word Mark DKNY Design Mark

Description of NONE Mark Goods/Services Class 008. First use: First Use: 2013/10/00 First Use In Commerce: 2013/10/00 FLATWARE AND TABLEWARE, NAMELY, FORKS, KNIVES AND SPOONS MADE OF STERLING SILVER, STAINLESS STEEL, SILVER PLATED OR NONPRECIOUS METAL Class 021. First use: First Use: 2013/10/00 First Use In Commerce: 2013/10/00 DINNERWARE, NAMELY, PLATES, DISHES, CHARGERS, BOWLS, CUPS AND SAUCERS; STEMWARE, BEVERAGEWARE; PITCHERS, DECANTERS; SERVING PLATTERS AND TRAYS NOT OF PRECIOUS METAL; SALT AND PEPPER SHAKERS, MUGS; SUGAR BOWLS AND CREAMERS, NAMELY, CONTAINERS FOR SERVING CREAM NOT MADE OF PRECIOUS METAL; NON-ELECTRIC COFFEE AND TEA POTS NOT MADE OF METAL; CANDLE HOLDERS NOT OF PRECIOUS METAL; SALAD SERVERS, NAMELY, SERVING FORKS AND TONGS

U.S. Registration 4851435 Application Date 06/15/2015 No. Registration Date 11/10/2015 Foreign Priority NONE Date Word Mark DKNY Design Mark

Description of NONE Mark Goods/Services Class 035. First use: First Use: 1998/03/22 First Use In Commerce: 1998/03/22 RETAIL STORE SERVICES AND ON-LINE RETAIL STORE SERVICES, ALL IN THE FIELDS OF COSMETICS, TOILETRIES, AND FRAGRANCES, CANDLES, CUTLERY, SUNGLASSES, EYEGLASS FRAMES, AND OTHER OPTICAL WARES, JEWELRY AND WATCHES, LEATHER GOODS, BAGS, AND LUGGAGE, TABLE WARE, GLASSWARE, AND CRYSTAL,BED, BATH AND TABLE LINENS, HOME FURNISHINGS, AND CLOTHING, FOOTWEAR, AND HEAD GEAR

U.S. Registration 4909028 Application Date 06/12/2012 No. Registration Date 03/01/2016 Foreign Priority NONE Date Word Mark DKNY Design Mark

Description of NONE Mark Goods/Services Class 020. First use: First Use: 2003/01/00 First Use In Commerce: 2003/01/00 PICTURE FRAMES AND PILLOWS

U.S. Registration 4947747 Application Date 03/27/2015 No. Registration Date 04/26/2016 Foreign Priority NONE Date Word Mark DKNY BE DESIRED 100% PURE NEW YORK Design Mark

Description of The mark consists of an oval design with the letters "DKNY" at the top of the Mark oval, the wording "BE DESIRED" in the middle of the oval, placed in between two black horizontal lines, and the wording "100% PURE NEW YORK" at the bottom of theoval. The colors black, white and gray represent background, out- lining, shadingand/or transparent areas and are not part of the mark. Goods/Services Class 003. First use: First Use: 2015/11/30 First Use In Commerce: 2015/11/30 Fragrances for personal use; Non-medicated skin care preparations

U.S. Registration 4952077 Application Date 07/28/2014 No. Registration Date 05/03/2016 Foreign Priority NONE Date Word Mark MYNY DKNY Design Mark

Description of The mark consists of the terms "MYNY" positioned within an abstract pixelated Mark heart design and with the term "DKNY" is positioned directly below the heart design. Goods/Services Class 003. First use: First Use: 2014/08/31 First Use In Commerce: 2014/08/31 Fragrances for personal use; non-medicated skin care preparations

U.S. Registration 4960587 Application Date 03/27/2013 No. Registration Date 05/17/2016 Foreign Priority NONE Date Word Mark DKNY PURE Design Mark

Description of NONE Mark Goods/Services Class 025. First use: First Use: 2015/08/27 First Use In Commerce: 2015/08/27 CLOTHING, NAMELY, COATS, BLAZERS, JACKETS, VESTS, DRESSES, SKIRTS, PANTS, TROUSERS, JEANS, SWEATPANTS, SWEATSHIRTS, SHORTS, SWEATERS, PULLOVERS, SHIRTS, BLOUSES, SHELLS, SHRUGS, TUNICS, T-SHIRTS, TANK TOPS AND CAMISOLES, WRAPS, SCARVES

U.S. Registration 5036766 Application Date 12/14/2012 No. Registration Date 09/06/2016 Foreign Priority NONE Date Word Mark DKNY Design Mark

Description of NONE Mark Goods/Services Class 009. First use: First Use: 2016/03/17 First Use In Commerce: 2016/03/17 BATTERY CHARGERS

U.S. Registration 5073986 Application Date 02/12/2015 No. Registration Date 11/01/2016 Foreign Priority NONE Date Word Mark DKNY BE TEMPTED Design Mark

Description of NONE Mark Goods/Services Class 003. First use: First Use: 2016/06/30 First Use In Commerce: 2016/06/30 Fragrances for personal use; Non-medicated skin care preparations

U.S. Registration 5100596 Application Date 03/27/2013 No. Registration Date 12/13/2016 Foreign Priority NONE Date Word Mark DKNYPURE Design Mark

Description of NONE Mark Goods/Services Class 035. First use: First Use: 2015/08/00 First Use In Commerce: 2015/08/00 RETAIL STORE SERVICES IN THE FIELDS OF BED LINENS, CLOTHING

U.S. Registration 5172991 Application Date 10/23/2015 No. Registration Date 03/28/2017 Foreign Priority NONE Date Word Mark DKNY Design Mark

Description of The mark consists of a thin horizontal rectangle comprised of, from left to right, a Mark dark segment, a light segment, anda dark segment such that "DKNY" is set forth in dark stylized uppercase lettering on the middle light segment. Goods/Services Class 025. First use: First Use: 2016/02/15 First Use In Commerce: 2016/02/15 Clothing for men, women namely, coats, overcoats, trench coats, raincoats, an- oraks, parkas, blazers, jackets, cardigans, boleros, sport coats, wind resistant jackets, suits, tuxedos, vests, dresses, caftans, jumpers, skirts, pants, slacks,trousers, jeans, dungarees, jumpsuits, coveralls, flight suits, gym suits, jogging suits, sweat pants, thermal underwear, shorts, skorts, rompers, culottes, shortalls, shirts, sweaters, jerseys, blouses, tunics, sweatshirts, t-shirts, tops, knit tops, halter tops, tank tops, pullovers, formal shirts, bodysuits, unitards, camisoles, chemises, undershirts, slips, loungewear, leggings, socks, head wear, hats, caps, hoods, head bands, neckties, pocket squares, scarves, shawls, neckerchiefs, gloves, mittens, belts, sashes, shoes, footwear, boots, athletic shoes, athletic footwear, sandals, galoshes Class 035. First use: First Use: 2016/03/15 First Use In Commerce: 2016/03/15 Retail store services and on-line retail store services, all in the fields of watches, leather goods, bags, clothing, footwear, and head gear

U.S. Registration 5251771 Application Date 10/23/2015 No. Registration Date 07/25/2017 Foreign Priority NONE Date Word Mark DKNY Design Mark

Description of The mark consists of a thin horizontal rectangle comprised of, from left to right, a Mark dark segment, a light segment, anda dark segment such that "DKNY" is set forth in dark stylized uppercase lettering on the middle light segment. Goods/Services Class 014. First use: First Use: 2016/09/00 First Use In Commerce: 2016/09/00 Horological and other chronometric instruments, parts and accessories thereof, namely, wrist watches, watch bands, watch straps, watch bracelets, watch chains,watch cases Class 018. First use: First Use: 2016/06/00 First Use In Commerce: 2016/06/00 Handbags; shoulder bags; evening bags; cosmetic bags sold empty; leather shoulder belts; grooming kits sold empty; wallets; credit card cases; business card cases; key cases; coin purses; clutch purses; general purpose purses; drawstring pouches; pouches of leather, imitation leather and textile; tote bags; saddle bags; roll bags; sling bags; travel bags; overnight bags; duffle bags; backpacks; attache cases; satchels; umbrellas; shopping bags made of leather; weekender bags; travel kits sold empty

U.S. Application 87347425 Application Date 02/23/2017 No. Registration Date NONE Foreign Priority NONE Date Word Mark DKNY SPORT Design Mark

Description of NONE Mark Goods/Services Class 025. First use: First Use: 2017/02/28 First Use In Commerce: 2017/02/28 Clothing for men and women, namely, coats, overcoats, trench coats, raincoats, jackets, wind resistant jackets, vests, caftans, jumpers, pants, gym suits, jogging suits, sweat pants, shorts, skorts culottes, shortalls, shirts, sweaters, jerseys, tu- nics, sweatshirts, t-shirts, tops, knit tops, halter tops, tank tops, pullovers, body- suits, unitards, camisoles, chemises, undershirts, slips being underclothing, loungewear, leggings, socks,head wear, hats, caps as headwear, hoods, head bands, sports , stretch pants, sports caps and hats, sports vests, sports shirts, sports , sports pants, sports jerseys, yoga pants

U.S. Application 87553451 Application Date 08/02/2017 No. Registration Date NONE Foreign Priority NONE Date Word Mark DKNY SPORT Design Mark

Description of The mark consists of a shaded rectangleto the left of the wording "DKNY" Mark whichis to the left of another shaded rectangle, inside which is the wording "SPORT". Goods/Services Class 003. First use: First Use: 0 First Use In Commerce: 0 Fragrances for personal use; Non-medicated skin care preparations; Body cream; Body lotion; Body cleanser in the natureof a skin cleanser; Non- medicated exfoliating preparations for the body; Hair shampoo; Hair conditioner; Eau de toilette; Perfume; Fragrance body lotion; Fragrance body cream; Skin cleansing lotion; Skin cleansing gel; Shaving foam; Pre-shave preparations, namely, skin and body lotions; After shave lotions and gels; After shave balm; Antiperspirants and deodorants; Essential oils for personal use; Colognes; Body scrubs; Bath soaps; Non-medicated bath salts; Eau de parfum; Bath gels; Bath lotions; Body wash Class 009. First use: First Use: 0 First Use In Commerce: 0 Eyewear, namely, sunglasses, eyeglassesand ophthalmic frames; Eyewear cases; Eyewear pouches; Eyewear retainers; Eyewear accessories, namely, straps, neck cords, chains and head straps which restrain eyewear from move- ment on a wearer; Sports eyewear; Protective eyewear; Ear buds; Headphones; Battery chargers; Computer mouse; Carrying cases and protective covers for personal electronic devices, namely, cell phones, portable media players, per- sonal digital assistants, tablet computers, laptops and electronic reading devices; Computer application softwarefor mobile phones, portable media play- ers, handheld computers for the distribution of multimedia content containing text, graphics, images, audio and video in the field of fashion, namely, fashion advice, fashion collections, fashion show footage, personal shopping tips, and designer interviews and personal journal entries; Smart watches Class 014. First use: First Use: 0 First Use In Commerce: 0 Horological and other chronometric instruments, parts and accessories thereof, namely, watches, wrist watches, sports watches, pocket watches, stop watches, watches for outdoor use, diving watches; Watch fobs; Watch bands, watch straps, watch bracelets, watch chains, watch casesbeing parts of watches; Watch clasps; Parts for watches; Watch pouches; Presentation boxes for watches Class 018. First use: First Use: 0 First Use In Commerce: 0 Handbags; Shoulder bags; All-purpose sport bags; Athletic bags; Travelling bags; Beach bags; Sling bags; Messenger bags; Hiking bags; Carry-all bags; Hunting bags; Duffel bags; Bags and holdalls for sports clothing; School bags; Leather and imitation leather sport bags; Hobo bags; Bum bags; Crossbody bags; Backpacks; Cosmetic bags sold empty; Leather shoulder belts; Grooming kits sold empty in the nature of empty cosmetic bags; Wallets; Credit card cases; Business card cases; Key cases; Coin purses; Clutch purses;General purpose purses; Drawstring pouches; Pouches of leather, imitation leather and textile; Belt bags; Tote bags; Saddle bags; Roll bags; Travel bags; Overnight bags; Duffle bags; Suit bags; Garment bags for travel; Gym bags; Tie cases;Backpacks; Attache cases; Satchels; Suitcases; Trunks; Luggage; Um- brellas; Shopping bags made of leather; Weekend bags;Travel kits sold empty in the nature ofempty cosmetic bags Class 025. First use: First Use: 0 First Use In Commerce: 0 Clothing for men and women, namely, coats, overcoats, trench coats, raincoats, anoraks, parkas, blazers, jackets, cardigans, boleros, sport coats, wind resistant jackets, suits, vests, dresses, caftans, jumpers, skirts, pants, slacks, trousers, jeans, dungarees, jumpsuits, coveralls, flight suits, gym suits, jogging suits, sweat pants, thermal underwear, shorts, skorts, rompers, culottes, shortalls, shirts, sweaters, jerseys, blouses, tunics, sweatshirts, t-shirts, tops, knit tops, halter tops, tank tops, pullovers, bodysuits, unitards, camisoles, chemises, un- dershirts, slips being underclothing, loungewear, leggings, socks, head wear, hats, caps as headwear, hoods, headbands, neckties, pocket squares, scarves, shawls, neckerchiefs, gloves, mittens, belts, sashes, shoes, footwear, boots,athletic shoes, athletic footwear, sandals, galoshes, golf shoes, tennis shoes,dusters in the nature of coats, overalls, underwear, sports bras, stretch pants, swimwear; Sports caps and hats, sportsvests, sports shirts, sports over- uniforms, sports singlets, sports shoes, sports stockings, sports pants, sports jerseys, sports , yoga pants Class 035. First use: First Use: 0 First Use In Commerce: 0 Retail store services and on-line retail store services, all in the fields of cosmet- ics, toiletries, fragrances, eyewear, sunglasses, eyewear frames, and otheroptic- al wares, watches, leather goods, bags, luggage, clothing, footwear and headgear

U.S. Application 87839521 Application Date 03/19/2018 No. Registration Date NONE Foreign Priority NONE Date Word Mark DKNYC Design Mark

Description of NONE Mark Goods/Services Class 018. First use: First Use: 0 First Use In Commerce: 0 Handbags, shoulder bags, purses, tote bags, satchels

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Signature /Robert J. English/ Name Robert J. English Date 11/21/2018 Ref. No. 17684.202

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

In the Matter of Application Serial No. 87/752,176 Filed: January 11, 2018 For Mark: EBNY Published in the Official Gazette: May 29, 2018 ------X GABRIELLE STUDIO, INC.,

Opposer, Opposition No.

-against- NOTICE OF OPPOSITION

EVERBEAUTY INC.,

Applicant. ------X Commissioner for Trademarks Attn: Trademark Trial and Appeal Board P.O. Box 1451 Alexandria, VA 22313-1451

Gabrielle Studio, Inc. (“Opposer”), a New York corporation having an address at 512

Seventh Avenue, New York, NY 10018, believes that it will be damaged by registration of the

mark EBNY, shown in Application Serial No. 87/752,176, for “cosmetics; non-medicated skin

care preparations, namely, creams, lotions, gels, toners, cleaners and peels” in International Class

3, and having been granted extensions of time to oppose the application up to and including

November 25, 2018, hereby opposes the same.

As grounds of opposition, it is alleged that:

1. Beginning in 1989, Opposer, through its affiliated companies, predecessors-in-

interest and authorized licensees, has been in the business of designing, producing, selling and

distributing a variety of goods and services, including, without limitation, clothing, footwear,

headgear, fragrances, body lotions and other personal care products, handbags and various other

17684/202/2541233.1 Ref. No. 17684.202 types of bags, fashion accessories, eyewear, sunglasses, jewelry, watches, and home and lifestyle products, under trademarks and service marks consisting of or containing the term DKNY, either alone or in conjunction with other words and/or designs (collectively, the “DKNY Marks”).

2. Opposer operates DKNY retail stores in the United States and online at www.DKNY.com. Third-party retailers and online merchants, ranging from large department stores to boutiques, also offer many DKNY-branded products. Collectively, these retail establishments have featured and offered a variety of goods, including, without limitation, clothing, footwear, headgear, fragrances, body lotions and other personal care products, handbags and various other types of bags, fashion accessories, eyewear, sunglasses, jewelry, watches, and home and lifestyle products, bearing one or more of the DKNY Marks.

3. Opposer also promotes and sells its DKNY branded products at www.DKNY.com, and is very active in advertising its brand and promoting its products through various forms of social media.

4. Opposer is the owner of numerous federal trademark registrations and applications for the DKNY Marks, including, without limitation, Registration Nos. 1554808,

1586768, 1607425, 1646910, 1784213, 1951022, 1958158, 2203071, 2358744, 2470110,

2579723, 2579817, 2594717, 2601327, 2636433, 2992294, 3086192, 3187361, 3345619,

3676442, 3720002, 3742524, 3857399, 3881726, 4435041, 4625225, 4851435, 4909028,

4947747, 4952077, 4960587, 5036766, 5073986, 5100596, 5172991 and 5251771 and

Application Serial Nos. 87/347425, 87/553451 and 87/839521 covering goods and services in

International Classes 3, 8, 9, 14, 16, 18, 20, 21, 24, 25, 35 and 42. Registration Nos. 1554808,

1586768, 1607425, 1646910, 1784213, 1951022, 1958158, 2203071, 2358744, 2470110,

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17684/202/2541233.1 Ref. No. 17684.202

2579723, 2579817, 2594717, 2601327, 2636433, 2992294, 3086192, 3187361, 3676442,

3720002, 3742524, 3857399 and 3881726 are incontestable.

5. The goods and services designated by the DKNY Marks have been phenomenally successful and have enjoyed sales of hundreds of millions of dollars per year.

6. Millions of dollars are also spent each year in advertising the DKNY Marks through various media, including magazines, newspapers, in-store displays, promotional mailers, outdoor advertising, social media, internet websites and similar media prominently promoting the DKNY Marks.

7. As a result of the extensive advertisement, promotion, sale and distribution of its goods and services bearing or offered in connection with the DKNY Marks, coupled with the brand’s potent commercial success, Opposer has acquired tremendous goodwill in the DKNY

Marks, and said goodwill has become closely and uniquely identified with Opposer.

8. On January 11, 2018, applicant Everbeauty Inc. (“Applicant”) filed intent-to-use based Application Serial No. 87/752,176 (the “Application”) to register the standard character word mark EBNY (“Applicant’s Mark”) for “cosmetics; non-medicated skin care preparations, namely, creams, lotions, gels, toners, cleaners and peels” in International Class 3.

9. Upon information and belief, Applicant did not use Applicant’s Mark in United

States commerce in connection with the goods covered by the Application prior to Applicant’s

Constructive First Use Date of January 11, 2018.

10. By virtue of Opposer’s prior use of, and registrations for, the DKNY Marks, including in relation to body lotions and other personal care products in Class 3, Opposer has rights in Opposer’s DKNY Marks prior and superior to any alleged rights of Applicant in

Applicant’s Mark covered by the Application.

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17684/202/2541233.1 Ref. No. 17684.202

11. The goods covered by the Application are identical and/or closely related to goods bearing and services offered in connection with the DKNY Marks.

12. Applicant’s Mark so resembles the DKNY Marks as to be likely, when applied to

Applicant’s goods, to cause confusion, to cause mistake, and to deceive the trade and public, who are likely to believe that Applicant’s goods have their origin with Opposer and/or that such goods are approved, endorsed or sponsored by Opposer or associated in some way with Opposer.

Opposer would therefore be injured by the granting to Applicant of a certificate of registration for Applicant’s Mark.

WHEREFORE, Opposer believes that it will be damaged by registration of Applicant’s

Mark and respectfully requests that its opposition be sustained and that the application for said registration be denied.

Please address all communications to Jonathan Z. King, Esq. at the address listed below.

Dated: New York, New York November 21, 2018

Respectfully submitted,

COWAN, LIEBOWITZ & LATMAN, P.C. Attorneys For Opposer

By: /Robert J. English/ Jonathan Z. King Lawrence W. Greene Robert J. English

114 West 47th Street New York, NY 10036-1525 (212) 790-9200

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17684/202/2541233.1