Notice of Opposition Opposer Information Applicant Information

Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA1043236 Filing date: 03/18/2020 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 GSLT Holdings Limited Granted to Date 03/18/2020 of previous ex- tension Address 67/68 HATTON GARDEN, SUITES 11/12 LONDON, EC1N8JY UNITED KINGDOM Attorney informa- William C. Wright tion Epstein Drangel LLP 60 E. 42nd Street, Ste. 2520 New York, NY 10165 UNITED STATES [email protected] 2122925390 Applicant Information Application No 88455704 Publication date 11/19/2019 Opposition Filing 03/18/2020 Opposition Peri- 03/18/2020 Date od Ends Applicant DL Products by Design, LLC 25920 Iris Ave. Ste 13A #631 Moreno Valley, CA 92551 UNITED STATES Goods/Services Affected by Opposition Class 035. First Use: 0 First Use In Commerce: 0 All goods and services in the class are opposed, namely: online retail store services featuring a wide variety of consumer goods of others Grounds for Opposition Priority and likelihood of confusion Trademark Act Section 2(d) Dilution by blurring Trademark Act Sections 2 and 43(c) Marks Cited by Opposer as Basis for Opposition U.S. Registration 5197783 Application Date 04/27/2016 No. Registration Date 05/09/2017 Foreign Priority NONE Date Word Mark PALACE SKATEBOARDS Design Mark Description of The mark consists of the wording "PALACE" appearing three times within the Mark sides of a triangular design above the wording "SKATEBOARDS". Goods/Services Class 035. First use: First Use: 0 First Use In Commerce: 0 Organization, operation and supervisionof loyalty and incentive schemes, namely, administration of a customer loyalty program which provides incentive award programs for customers and employees through the distribution of pre- paid stored value cards for the purpose of promoting and rewarding loyalty, incentive award programs through issuance and processing of loyalty points for purchase of a company's goods and services, and incentive award programs for customers through issuance and processing of loyalty points for online purchase of a company's goods and services; advice and assistance in the selection of goods and services, namely, providing consumer product information for the purpose of selecting skateboards, skateboard hardware, skateboard parts, and skateboard accessories; auctioneering; direct mail order and online retail store services featuring skateboards,skateboard hardware, skateboard parts, and skateboard accessories; business intermediary services relating to bringing customers and/or buyers and sellers together in the field of skateboards, skateboard hardware, skateboard parts, and skateboard accessories; provision of business information in the field of skateboards, skateboard hardware, skateboard parts, and skateboard accessories; retail sporting goods store including extreme sports apparatus and equipment for commercial purposes via the Inter- net; wholesale retail store services featuring skateboards, skateboard goods, skateboard hardware, skateboard parts, skateboard wax, skateboard wheels, skateboard rollers, bags for skateboards, athletic protective wrist, knee and el- bow pads or guards for skateboarding, skateboard accessories, protective clothing, gloves and headgear,and skateboarding apparel; wholesale and retail store services featuring sporting articles and sporting apparatus; information, advisory and consultancy services relating to the aforesaid U.S. Registration 5711377 Application Date 04/05/2018 No. Registration Date 03/26/2019 Foreign Priority NONE Date Word Mark PALACE PALACE PALACE Design Mark Description of The mark consists of the wording "PALACE" appearing three times within a tri- Mark angular design. Goods/Services Class 025. First use: First Use: 2014/02/00 First Use In Commerce: 2014/02/00 Baseball caps and hats; Caps being headwear; Cardigans; Coats; Footwear; Hats; Pants; Shirts; Shorts; Socks; Sweaters; Sweatshirts; Vests; Visors being headwear; Belts; Hoodies; Jackets; Jerseys; T-shirts Attachments 79189425#TMSN.png( bytes ) 87864318#TMSN.png( bytes ) NOO PALACE Final w Exhibits.pdf(677186 bytes ) Signature /William C. Wright/ Name William C. Wright Date 03/18/2020 William C. Wright EPSTEIN DRANGEL LLP 60 East 42nd Street, Suite 2520 New York, NY 10165 Tel: 212-292-5390 Fax: 212-292-5391 E-Mail: [email protected] Attorney for Opposer IN THE UNITED STATES PATENT AND TRADEMARK OFFICE TRADEMARK TRIAL AND APPEAL BOARD GSLT Holdings Limited, Opposer, v. Opposition No. DL Products by Design, LLC DBA DL Products by Design, LLC, Applicant. NOTICE OF OPPOSITION In the matter of U.S. Trademark Application Serial No. 88455704, GSLT Holdings Limited, with a business address of 67/68 Hatton Garden, Suites 11/12, London, United Kingdom EC1N8JY (“Opposer”), believes that it is or will be damaged by the registration of the trademark (hereinafter, “Applicant’s Mark”), as reflected in U.S. Trademark Application Serial No. 88455704, in the name of DL Products by Design, LLC DBA DL Products by Design, LLC , a limited liability company, organized and existing under the law of the State of California, with an address of 25920 Iris Ave., Ste 13A, #631 Moreno Valley, California 92551 1 (hereinafter, “Applicant”), and hereby opposes the same. As grounds for its opposition, Opposer, by and through its undersigned attorneys, alleges as follows: 1. Opposer is an internationally renowned lifestyle company that designs, manufactures, markets, and distributes clothing, apparel, footwear, skate wear, skateboard goods, and accessories. 2. Since its inception, Opposer has become a leading pioneer in casual fashion, known for moving ahead of the trends in its industry. 3. Capitalizing on its success, Opposer has collaborated with some of the most famous brands in the world, including, e.g., JUVENTUS F.C., UMBRO, REEBOK, ADIDAS, GORE- TEX, and RALPH LAUREN. 4. Opposer’s clothing has been worn by a plethora of famous celebrities, including, e.g., Travis Scott, Jonah Hill, Drake, Kanye West, Jay-Z, ASAP Rocky, Rihanna, Justin Bieber, Kylie Jenner, and The Weeknd. 5. Opposer was nominated for the Fashion Awards 2018, in the Urban Luxe category, alongside ALYX, OFF-WHITE, SUPREME, and MARINE SERRE. 6. Opposer is the owner of all rights, title, and interest in and to and variations thereof (hereinafter, “Opposer’s Marks”) for clothing, apparel, footwear, skate wear, skateboard goods, and accessories, as well as retail store services for the same (hereinafter, “Opposer’s Goods/Services”). 7. Opposer has expended vast amounts of time, effort, and money in developing, advertising and publicizing the sale of Opposer’s Goods/Services and Opposer’s Marks. 2 8. Since long prior to any date in which Applicant can rely, Opposer has continuously used in commerce Opposer’s Marks for Opposer’s Goods/Services. 9. Opposer’s Marks have become famous and are distinctive indicators of the origin of Opposer’s Goods/Services and are extremely valuable symbols of Opposer’s goodwill. 10. In addition to Opposer’s common law rights, Opposer owns U.S. trademark registrations of Opposer’s Marks, Reg. Nos. 5197783 and 5711377. Print-outs of said registrations from the electronic database records of the United States Patent and Trademark Office (hereinafter, “USPTO”) are attached hereto as Exhibit A. 11. Notwithstanding Opposer’s prior rights in and to Opposer’s Marks, on June 1, 2019, Applicant filed an application with the USPTO for Applicant’s Mark, Serial No. 88455704, for “online retail store services featuring a wide variety of consumer goods of others” in Class 35 (hereinafter, “Application” and “Applicant’s Services”, respectively). 12. Upon information and belief, Applicant was aware of Opposer’s Marks and Opposer’s Goods/Services before it filed the Application. 13. There is no issue of priority as the filing date of the Application and/or any alleged dates of first use in commerce of Applicant’s Mark are subsequent to Opposer’s filing date, registration date, and/or actual use in commerce of Opposer’s Marks, individually and collectively. 14. Opposer has been harmed, and continues to be harmed, by the Application. COUNT ONE (Likelihood of Confusion) 15. Opposer repeats and re-alleges each and every allegation set forth in the foregoing paragraphs as though fully set forth herein. 16. Applicant’s Mark is so similar to Opposer’s Marks in sound, appearance, meaning, and/or commercial impression as to be likely to cause confusion, mistake, or deception as to the 3 source of origin or sponsorship of the goods and services for which the marks are used or are intended to be used on or in connection with. 17. Applicant’s Mark is likely to cause the mistaken belief that Applicant’s Services originate with, are sponsored by, and/or are otherwise affiliated with Opposer. 18. Applicant’s Services, as set forth in the Application, are the same as or similar to Opposer’s Goods/Services, are or will be offered to the same general class of purchasers, are commercially related, will be found in the same overlapping marketing environments, and are or will be offered and/or sold through the same or similar channels of trade. 19. Applicant’s Mark is a colorable imitation or misappropriation of Opposer’s Marks and will enable Applicant to reap where it has not sown by trading on the goodwill of Opposer’s business as symbolized by Opposer’s Marks. 20. Applicant’s Mark is likely to cause irreparable loss, injury, and damage to Opposer’s business and to the extensive goodwill and reputation associated with Opposer’s Marks. COUNT TWO (Dilution) 21. Opposer repeats and re-alleges each and every allegation set forth in the foregoing paragraphs as though fully set forth herein. 22. Before the filing date of the Application, Opposer’s Marks had acquired distinctiveness and a high degree of consumer recognition and, as a result of Opposer’s long and continuous use of the same, had become famous.

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