Notice of Opposition Opposer Information Applicant Information

Home , Fur clothing, Sweatpants

Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA1084740 Filing date: 09/28/2020

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 Nakdcom One World AB Entity aktiebolag (ab) Citizenship Sweden Address GAMLESTADSVAGEN 2-4 GOTEBORG, 41502 SWEDEN

Attorney informa- RHETT V. BARNEY tion LEE & HAYES, P.C. 601 W. RIVERSIDE AVE., STE. 1400 SPOKANE, WA 99201 UNITED STATES Primary Email: [email protected] Secondary Email(s): [email protected], [email protected], litig- [email protected] 509-944-4642

Docket Number O64-0074LIT Applicant Information

Application No. 77044776 Publication date 09/08/2020 Opposition Filing 09/28/2020 Opposition Peri- 10/08/2020 Date od Ends Applicant Nak'd, LLC P.O. BOX 384 NEPTUNE, NJ 07753 UNITED STATES Goods/Services Affected by Opposition

Class 025. First Use: 2006/10/15 First Use In Commerce: 2006/10/20 All goods and services in the class are opposed, namely: Clothing for women and girls, namely, pants, denim jeans, sweatshirts, overalls, shorts, shirts, blouses, skirts, skorts, capris, dresses, sweaters, shrugs, jackets in all fabrics and weights, vests,T-shirts, sweatpants, swimwear, caps, headbands, hats, belts, footwear, slippers, robes, tank tops, swimwear, socks, leggings, hosiery, baseball caps, hats, bandanas, jog sets comprised of shirts, sweatshirts, and sweatpants, bras, panties, camisoles, lingerie, loungewear, sleepwear, scarves, shawls, gloves, mittens, ear muffs, mufflers, ties, outerwear in all fabrics, namely, cloth, denim, fur, leather and suede jackets and coats, rainwear, fur hats, fur stoles, fur gloves,fur muffs Grounds for Opposition

Priority and likelihood of confusion Trademark Act Section 2(d) No use of mark in commerce before application Trademark Act Sections 1(a) and (c) or amendment to allege use was filed Marks Cited by Opposer as Basis for Opposition

U.S. Application 87627592 Application Date 09/29/2017 No. Registration Date NONE Foreign Priority NONE Date Word Mark NA-KD Design Mark Description of NONE Mark Goods/Services Class 025. First use: First Use: 0 First Use In Commerce: 0 Ties as clothing; Sweatpants; Tops as clothing; Knitwear, namely, shirts, dresses; Muffs; Ponchos; Roll necks, namely, roll neck sweaters; Headbands; Furs being clothing; Ear muffs; Quilted jackets; Chaps; Paper hats used as clothing items; Kerchiefs; Tights; Belts made of leather; Pocket squares; clothing layettes; Shorts; Bottoms as clothing; Clothing namely, hand-warmers; Warm-up suits; slips being clothing; denims being clothing, namely, shirts, pants, skirts; veils; clothing, namely, arm warmers; mufflers as neck scarves; boas; Weather- proof clothing, namely, Rain jackets; slipovers; Clothing made of fur, namely, Jackets; Garters; Corsets being clothing; corsets being clothing; Sportswear; namely, shirts, jackets, tops as clothing, tights, shorts, leggings; leather belts; Shoes; High-heeled shoes; Casual footwear; Heelpieces for footwear; footwear, excluding orthopedic footwear; insoles for shoes and boots; Shawls; Shawls and headscarves; Footwear; Headgear, namely, caps; Evening coats; Evening suits; Bathing drawers asclothing; Swimming costumes; Swim wear for gentlemen and ladies; Sleeveless jackets; Vest tops; Sleeveless jerseys; Belts made out of cloth; Belts made from imitation leather; belts; Boxer shorts; Bikinis; Blazers; Bermuda shorts; Brassieres; Denim jeans; Lingerie; Chemise tops;Women's suits; Trousers; Trousers of leather; Pantsuits; Button down shirts; Wedding dresses; Bridesmaids wear, namely,dresses for weddings; Bridesmaid dresses; Women's ceremonial dresses; Capes; Bowties; Dress shirts; Gowns; Dress pants;Pockets for clothing; Christening robes; three piece suits; Gloves; Men's and women's jackets, coats, trousers, vests; Head scarves; jackets; Skirts; Long jackets; Shirts for suits; Men's suits; Suits; Tabards; Car coats; Cuffs; Topcoats; Dressing gowns; Fur jackets; Silk ties as clothing; Scarves; Sarongs; Jackets; Ties as clothing; Loungewear; Socks and stockings; Neckerchiefs; bandanas; Dinnerjackets; Tee-shirts; Heavy jackets; Thermal underwear; Knickers; Panties, shorts and briefs Class 035. First use: First Use: 0 First Use In Commerce: 0 Wholesale outlet services featuring clothing; On-line and e-commerce wholesale ordering services featuring clothing; Retail store services in the field of clothing; On-line and e-commerce retail ordering services featuring clothing and clothing accessories; On-line and e-commerce retail ordering services in the field of clothing and clothing accessories; Retail store services featuring cutlery; On-line and e-commerce retail ordering services featuring cutlery; Retail store services featuring dietetic preparations;On-line and e-commerce retail ordering services in the field of dietetic preparations; Retail store services in the field of dietary supplements; On-line and e-commerce retail ordering services in the field of dietary supplements; Retail distributorship services featuring clothing; On-line and e- commerce retail ordering services in the field of clothing; Retail store services featuring fabrics; On-line and e- commerce retail outlet services in the field of fabrics; Retail store services featuring printed matter; On-line and e-commerce retail ordering services in in the field of printed matter; Retail store services featuring headgear; On-line and e-commerce retail ordering services in the field of headgear; Retail store services featuring bags; On-line and e-commerce retail ordering services featuring bags; Retail store services featuring sporting equipment; On-line and e-commerce retail ordering services in the field of sporting equipment; Retail store services featuring umbrellas;On-line and e-commerce retail ordering services in the field of umbrellas; Retail store services in the field of art materials; On-line and e-commerce retail ordering services in the field of art materials; Retail store services featuring furniture; On-line and e-commerce retailordering services in the field of furniture; Retail store services featuring works of art; On-line and e-commerce retail ordering services in the field of works of art; Retail store services featuring home furnishings; On-line and e- commerce retail ordering services in the fieldof home furnishings; Mail order retail services featuring clothing accessories;Department store retail services in thefield of beauty products, toiletries, machines for household use, hand tools, optical goods, domestic electrical and electronic equipment; On-line and e- commerce department store retail services connected with the sale of beauty products, toiletries, machines for household use, hand tools, optical goods, domestic electrical and electronic equipment; Wholesale outlet services featuring footwear; On-line and e-commerce wholesale orderingservices in the field of footwear; Wholesale store services featuring clothing;On-line and e-commerce wholesale ordering services in the field of clothing; Wholesale outlet services featuring bags; On-line and e-commerce wholesale ordering services in the field of bags; Retail distributorship services in the field ofclothing; On-line and e- commerce retailordering services in the field of clothing; Electronic commerce services, namely, providing information about products via telecommunication networks for advertising and sales purposes; Help in the management of business affairs or commercial functions of an industrial or commercial enterprise

U.S. Application 79272266 Application Date 06/19/2019 No. Registration Date NONE Foreign Priority NONE Date Word Mark NA-KD Design Mark Description of NONE Mark Goods/Services Class 014. First use: First Use: 0 First Use In Commerce: 0 Dress ornaments in the nature of jewellery; jewellery; costume jewellery; personal jewellery; costume jewellery; necklaces; precious jewellery; enamelled jewellery; ornamental pins; cloisonnÃ© jewellery; rings; gold rings; trinkets coated with precious metal, namely, wearable anddecorative small ornaments; key rings comprised of split rings and locking rings with decorative trinkets or fobs; key rings comprised of split rings and locking rings with decorate trinkets or fobs of precious metal; commemorative shieldsof precious metal; commemorative coins;objet d'art made of precious stones; works of art of precious metal; silver objets d'art; objet d'art of enamelled silver; objet d'art of enamelled gold; gold bullion; non-monetary coins; trinkets ofbronze, namely small decorative ornaments; statues and figurines, made of or coated with precious or semi-precious metals or stones, or imitations thereof; boxes of precious metal; trophies made of precious metals; trophies coated with precious metal alloys; jewellery boxes and presentation boxes for watches; time instruments, namely watches and clocks; gemstones, pearls and precious metals, and imitations thereof; amulets; bracelets; pendants; paste jewellery; cloisonne pins; women's jewelry; decorative articles in the nature of jewelry for personal use; decorative brooches; dia- dems; sterling silver jewellery; cuff links made of precious metals with semi- precious stones; cufflinks; cuff links of precious metal; jewelry, namely crosses; jewelry chains of precious metals; jewelry chains; gold plated bracelets; gold plated brooches; gold plated jewelry chains; gold plated rings; gold jewelry chains; ankle bracelets; earrings; key chains as jewellery; badges of precious metal; cuff linksmade of imitation gold; cuff links madeof gold; cuff links made of silver plate; tie pins; articles of jewellery made of precious metal alloys; jewellery madeof precious stones; earrings of precious metal; gold earrings; jewellery made of precious metals; jewellery coated withprecious metal alloys; jewellery made of plastics; wedding rings; friendship rings; wire of precious metal for mak- ing jewelry; jewelry rope chain made of precious metal; clasps for necklaces; jewellery rope chain for bracelets; jewellery rope chain for necklaces; jewellery rope chain for anklets; jewellery chain of precious metal for anklets; jewellery chain of precious metal for necklaces; jewellery chain of precious metal for bracelets; bracelets for watches; watch cases being part of watches; table watches; women's watches; digital clocks; clocks andwatches, electric; clocks and watches; clock cases being part of clocks; watch chains; watches; processed or semi-processed precious metals; diamonds; gold; gold alloys; figurines made of imitation gold; precious and semi-precious gems; semi-wrought precious stones and their imitations; pearl; natural gem stones; cubic zirconia; silver; sapphires; ruby; platinum and its alloys; platinum Class 018. First use: First Use: 0 First Use In Commerce: 0 Garment bags for travel; umbrellas and parasols; leather shoulder belts; curried skins; shoulder straps; animal skins, hides; leather for shoes; leather for furniture; leather and imitation leather; leather, unworked or semi-worked; imitation leather; leather laces; leather cord; animal hide parts in the nature of butts; skins of chamois, other than for cleaning purposes; trimmings of leather forfurniture; straps for soldiers' equipment in the nature of gear; straps made ofimitation leather; leather straps; furniture coverings of leather; leather cloth; leather thongs for fastening or securing items; umbrellas; umbrella covers; parasols; evening handbags; work bags in the nature of messenger bags; travel baggage; straps for luggage; shoulder bags;vanity cases, not fitted; diaper bags; boston bags; fanny packs; carrying casesfor documents; purses made of precious metal; multi-purpose purses; diplomatic bags in the nature of secure cases; portfolio cases in the nature of briefcases;flight bags; trunks in the nature of luggage; carry-on bags; tote bags; wheeledshopping bags; handbag frames; handbags, purses and wallets; handbags made of leather; handbags made of imitation leather; gentlemen's handbags; hand bags; wrist mounted purses; toiletry bags sold empty; pouches of leather and textile; wallets; chain mesh purses; key cases made of leather; leather credit card wallets;business, credit, and index card holders; business, credit, and index card cases; credit card holders; credit card cases in the nature of wallets; credit card holders made of imitation leather; rucksacks; pullmans; leather travelling bag sets; travelling handbags; garment bags for travel; travel luggage; coin purses; briefcases and attache cases; art portfolios cases; briefcases; wallets including card holders; wallets with card compartments; business card cases; tool bags sold empty for motorcycles; tool bags of leather, empty; weekend bags; collars for animals; covers for animals Class 025. First use: First Use: 0 First Use In Commerce: 0 ties; sweatpants; oilskins in the nature of waterproof coats; thermally insulated clothing, namely tops and bottoms; tops as clothing; knitwear, namely sweaters and shawls; muffs; ponchos; roll neck sweaters; headbands; fur clothing, namely shawls; ear muffs; quilted jackets; chaps; paper hats for use as clothing items; kerchiefs; tights; leather belts; pocket squares; clothing layettes; shorts; bottoms as clothing; clothing, namely handwarmers; warm-up suits; slips being undergarments; denims; veils; clothing, namely arm warmers; mufflers as neck scarves; boas; weatherproof clothing, namely raincoats, rain jackets, and rain pants;slipovers; clothing for children, namely children's matching outfits; clothing made of fur, namely fur stoles; garters;corsets being clothing; clothing of imitations of leather, namely jackets and coats; garments for protecting clothing, namely ponchos; sportswear, namely tops and bottoms; leather belts; shoes; high-heeled shoes; casual footwear; heelpieces for footwear; footwear, excluding orthopedic footwear; insoles for shoes and boots; shawls; shawls and headscarves; footwear; headwear; evening coats; eveningsuits; bathing drawers; swimming costumes; swim wear for gentlemen and ladies; sleeveless jackets; vest tops; sleeveless jerseys; belts made out of cloth; belts made from imitation leather; belts; boxer shorts; bikinis; blazers; bermuda shorts; brassieres; denim jeans; lingerie;chemise tops; women's suits; trousers; trousers of leather; pantsuits; button down shirts; wedding dresses; bridesmaidswear, namely jackets; bridesmaid dresses; evening wear, namely gowns; women's ceremonial dresses; capes; bowties; dressshirts; gowns; dress pants; pockets forclothing; christening robes; cosplay and Halloween costumes; three piece suits;gloves; men's and women's jackets, coats, trousers, vests; head scarves; jackets; ready-to-wear clothing, namely jumpsuits; skirts; long jackets; shirts for suits; men's suits; suits; tabards; car coats; corsets; cuffs; maternity clothing,namely tops and dresses; topcoats; clothing items, namely blindfolds worn over the eyes; dressing gowns; fur jackets; silk ties; scarves; sarongs; jackets; ties; loungewear; socks and stockings; neckerchiefs; bandanas in the nature of neckerchiefs; dinner jackets; tee-shirts; tights; heavy jackets; thermal underwear; casualwear, namely short pants and sports shirts; knickers; panties, shorts and briefs; outerclothing, namely long coats Class 035. First use: First Use: 0 First Use In Commerce: 0 Wholesale store services featuring to clothing; retail store services featuringclothing; retail store services featuring clothing and clothing accessories; retail store services featuring cutlery; retail store services featuring dietetic preparations; retail store services featuring dietary supplements; retail store services featuring fabrics; retail storeservices featuring printed matter; retail store services featuring headwear; retail store services featuring bags; retail store services featuring sporting equipment; retail store services featuring umbrellas; retail store services featuring art materials; retail store services featuring furniture; retail store services featuring works of art; retail store services featuring furnishings; mail order retail store services featuring clothing accessories; department store retailstore services featuring beauty products, toiletries, machines for household use, hand tools, optical goods, domestic electrical and electronic equipment; wholesale store services featuring footwear;wholesale store services featuring bags; electronic commerce services, namely, providing information about products viatelecommunication networks for advertising and sales purposes; help in the management of business affairs or commercialfunctions of an industrial or commercial enterprise

U.S. Application 79265520 Application Date 06/18/2019 No. Registration Date NONE Foreign Priority NONE Date Word Mark NA-KD Design Mark Description of NONE Mark Goods/Services Class 014. First use: First Use: 0 First Use In Commerce: 0 Dress ornaments in the nature of jewellery; jewellery; costume jewellery; personal jewellery; costume jewellery; necklaces; precious jewellery; enamelled jewellery; ornamental pins; cloisonnÃ© jewellery; rings; gold rings; trinkets coated with precious metal, namely, wearable anddecorative small ornaments; key rings comprised of split rings and locking rings with decorative trinkets or fobs; key rings comprised of split rings and locking rings with decorate trinkets or fobs of precious metal; commemorative shieldsof precious metal; commemorative coins;objet d'art made of precious stones; works of art of precious metal; silver objets d'art; objet d'art of enamelled silver; objet d'art of enamelled gold; gold bullion; non-monetary coins; trinkets ofbronze, namely small decorative ornaments; statues and figurines, made of or coated with precious or semi-precious metals or stones, or imitations thereof; boxes of precious metal; trophies made of precious metals; trophies coated with precious metal alloys; jewellery boxes and presentation boxes for watches; time instruments, namely watches and clocks; gemstones, pearls and precious metals, and imitations thereof; amulets; bracelets; pendants; paste jewellery; cloisonne pins; women's jewelry; decorative articles in the nature of jewelry for personal use; decorative brooches; dia- dems; sterling silver jewellery; cuff links made of precious metals with semi- precious stones; cufflinks; cuff links of precious metal; jewelry, namely crosses; jewelry chains of precious metals; jewelry chains; gold plated bracelets; gold plated brooches; gold plated jewelry chains; gold plated rings; gold jewelry chains; ankle bracelets; earrings; key chains as jewellery; badges of precious metal; cuff linksmade of imitation gold; cuff links madeof gold; cuff links made of silver plate; tie pins; articles of jewellery made of precious metal alloys; jewellery madeof precious stones; earrings of precious metal; gold earrings; jewellery made of precious metals; jewellery coated withprecious metal alloys; jewellery made of plastics; wedding rings; friendship rings; wire of precious metal; jewelry rope chain made of precious metal; clasps for necklaces; jewellery rope chain for bracelets; jewellery rope chain for necklaces; jewellery rope chain for anklets; jewellery chain of precious metal for anklets; jewellery chain of precious metalfor necklaces; jewellery chain of precious metal for bracelets; bracelets for watches; watch cases being part of watches; table watches; women's watches; digital clocks; clocks and watches, electric;clocks and watches; clock cases being part of clocks; watch chains; watches; processed or semi-processed precious metals; diamonds; gold; gold alloys; figurines made of imitation gold; precious and semi-precious gems; semi-wrought preciousstones and their imitations; pearl; natural gem stones; cubic zirconia; silver;sapphires; ruby; platinum and its alloys; platinum Class 018. First use: First Use: 0 First Use In Commerce: 0 Garment bags for travel; umbrellas and parasols; leather shoulder belts; curried skins; shoulder straps; animal skins, hides; leather for shoes; leather for furniture; leather and imitation leather; leather, unworked or semi-worked; imitation leather; leather laces; leather cord; animal hide parts in the nature of butts; skins of chamois, other than for cleaning purposes; trimmings of leather forfurniture; straps for soldiers' equipment in the nature of gear; straps made ofimitation leather; leather straps; furniture coverings of leather; leather cloth; leather thongs for fastening or securing items; umbrellas; umbrella covers; parasols; evening handbags; work bags in the nature of messenger bags; baggage; straps for luggage; shoulder bags; vanitycases, not fitted; diaper bags; boston bags; fanny packs; carrying cases for documents; purses made of precious metal; multi-purpose purses; diplomatic bags inthe nature of secure cases; portfolio cases in the nature of briefcases; flightbags; trunks in the nature of luggage; carry-on bags; tote bags; wheeled shopping bags; handbag frames; handbags, purses and wallets; handbags made of leather;handbags made of imitation leather; gentlemen's handbags; hand bags; wrist mounted purses; toiletry bags sold empty; pouches of leather and textile; wallets; chain mesh purses; key cases made of leather; leather credit card wallets; business, credit, and index card holders; business, credit, and index card cases; credit-card holders; credit card cases in the nature of wallets; credit card holdersmade of imitation leather; rucksacks; pullmans; leather travelling bag sets; travelling handbags; garment bags for travel; travel luggage; coin purses; briefcases and attache cases; art portfolios cases; briefcases; wallets including card holders; wallets with card compartments;business card cases; tool bags sold empty for motorcycles; tool bags of leather, empty; weekend bags; collars for animals; covers for animals Class 025. First use: First Use: 0 First Use In Commerce: 0 Clothing, ; ties; sweatpants; oilskins in the nature of waterproof coats; thermally insulated clothing, namely tops andbottoms; tops as clothing; knitwear, namely sweaters and shawls; muffs; ponchos; roll neck sweaters; headbands; furs clothing, namely shawls; ear muffs; quilted jackets; chaps; paper hats for use as clothing items; kerchiefs; tights; leather belts; pocket squares; clothing layettes; shorts; bottoms as clothing; clothing, namely handwarmers; warm-up suits; slips being undergarments; denims; veils;clothing, namely arm warmers; mufflers as neck scarves; boas; weatherproof clothing; weatherproof clothing, namely raincoats, rain jackets, and rain pants; slipovers; clothing for children, namely children's matching outfits; clothing madeof fur, namely fur stoles; garters; corsets being clothing; clothing of imitations of leather, namely jackets and coats; garments for protecting clothing, namely ponchos; sportswear, namely tops and bottoms; leather belts; shoes; high-heeled shoes; casual footwear; heelpieces for footwear; footwear, excluding orthopedic footwear; insoles for shoes and boots; shawls; shawls and headscarves; footwear; headwear; evening coats; evening suits; bathing drawers; swimming costumes; swim wear for gentlemen and ladies; sleeveless jackets; vest tops; sleeveless jerseys; belts made out of cloth; belts made from imitation leather; belts; boxer shorts; bikinis; blazers; bermuda shorts; brassieres; denim jeans; lingerie; chemise tops; women's suits; trousers; trousers of leather; pantsuits; button down shirts; wedding dresses; bridesmaids wear, namely jackets; bridesmaid dresses; evening wear, namely gowns; women's ceremonial dresses; capes; bowties; dress shirts; gowns; dress pants; pockets for clothing; christening robes; cosplay and Halloween costumes; three piece suits; gloves; men's and women's jackets, coats, trousers, vests; head scarves; jackets; ready-to-wear clothing, namely jumpsuits;skirts; long jackets; shirts for suits;men's suits; suits; tabards; car coats;corsets; cuffs; maternity clothing, namely tops and dresses; topcoats; clothingitems, namely blindfolds worn over the eyes; dressing gowns; fur jackets; silk ties; scarves; sarongs; jackets; ties; loungewear; socks and stockings; neckerchiefs; bandanas in the nature of neckerchiefs; dinner jackets; tee-shirts; tights; heavy jackets; thermal underwear; casualwear, namely short pants and sports shirts; knickers; panties, shorts and briefs; outerclothing, namely long coats Class 035. First use: First Use: 0 First Use In Commerce: 0 Wholesale store services featuring to clothing; retail store services featuringclothing; retail store services featuring clothing and clothing accessories; retail store services featuring cutlery; retail store services featuring dietetic preparations; retail store services featuring dietary supplements; retail store services in featuring clothing; retail store services featuring fabrics; retail store services featuring printed matter;retail store services featuring headgear; retail store services featuring bags;retail store services featuring sporting equipment; retail store services featuring umbrellas; retail store services featuring art materials; retail store services featuring furniture; retail store services featuring works of art; retail store services featuring furnishings; mail order retail store services featuring clothing accessories; department store retail store services featuring beauty products, toiletries, machines for household use, hand tools, optical goods, domestic electrical and electronic equipment;wholesale store services featuring footwear; wholesale store services featuringclothing; wholesale store services featuring bags; retail store services featuring clothing; electronic commerce services, namely, providing information about products via telecommunication networks for advertising and sales purposes; helpin the management of business affairs or commercial functions of an industrial or commercial enterprise

Attachments NAKD CLOTHING Notice of Opposition.pdf(220102 bytes )

Signature /Rhett V. Barney/ Name Rhett V. Barney Date 09/28/2020 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

In the Matter of Application No. 77/044,776 By: Nakdcom One World AB

For the Trademark: Published in the Official Gazette on September 8, 2020

NAKDCOM ONE WORLD AB,

Opposer, Opposition No. ______v.

NAK’D, LLC,

Applicant.

NOTICE OF OPPOSITION

Opposer, Nakdcom One World AB (“Nakdcom” or “Opposer”), is a Swedish company

with its principal place of business in Götoeborg, Sweden. Opposer believes that it is and will

continue to be damaged by the issuance of a registration for the mark applied for in Application

Serial No. 77/044,776 (the “Nak’d Application”), filed on November 15, 2006 by Nak’d, LLC

(“Nak’d” or “Applicant”), a limited liability company with an address in Neptune, New Jersey.

As grounds for opposition, Opposer alleges the following:

1. Opposer is the owner of U.S. Trademark Application Serial Nos. 87/627,592

(filed on September 29, 2017 for the mark NA-KD), 79/272,266 (filed on June 19, 2019 for the

stylized mark NA-KD), and 79/265,520 (filed on June 18, 2019 for the mark NA-KD)

(collectively, “Opposer’s NA-KD Marks”), specifically incorporated into this Opposition.

1 2. Opposer is the owner of, inter alia, U.S Trademark Serial No. 3,669,650 for

NAKED in connection with clothing (“Opposer’s NAKED Mark”), specifically incorporated into this Opposition.

3. Opposer has been, and will continue to be, damaged in that the Nak’d Application has been cited as posing a potential basis for refusal to register Opposer’s NA-KD Marks.

4. Opposer will be damaged in that registration of the Nak’d Application will result in a likelihood of confusion with Opposer’s goods sold under Opposer’s NAKED Mark.

5. Opposer has consistently and continuously used Opposer’s NA-KD Marks and

Opposer’s NAKED Marks.

6. Opposer advertises and sells its services through the United States and worldwide under Opposer’s NA-KD Marks and Opposer’s NAKED Mark.

7. As a result of Opposer’s promotion, use, and sale of branded goods with

Opposer’s NAKED Mark and Opposer’s NA-KD Marks, Opposer has built up valuable goodwill in these marks.

8. On November 15, 2006, Applicant filed the Nak’d Application for the stylized mark NAK’D CLOTHING COMPANY, LLC (“Applicant’s Mark”) in International Class 025 for “Clothing for women and girls, namely, pants, denim jeans, sweatshirts, overalls, shorts, shirts, blouses, skirts, skorts, capris, dresses, sweaters, shrugs, jackets in all fabrics and weights, vests, T-shirts, sweatpants, swimwear, caps, headbands, hats, belts, footwear, slippers, robes,

tank tops, swimwear, socks, leggings, hosiery, baseball caps, hats, bandanas, jog sets comprised

of shirts, sweatshirts, and sweatpants, bras, panties, camisoles, lingerie, loungewear, sleepwear,

scarves, shawls, gloves, mittens, ear muffs, mufflers, ties, outerwear in all fabrics, namely, cloth,

2 denim, fur, leather and suede jackets and coats, rainwear, fur hats, fur stoles, fur gloves, fur

muffs.”

9. The Nak’d Application was published for opposition on September 8, 2020.

10. Upon information and belief, Applicant does not use Applicant’s Mark in

commerce, has abandoned Applicant’s Mark and the Nak’d Application, and is not entitled to

registration.

11. Upon information and belief, Opposer has priority over Applicant’s Mark as

described in the Nak’d Application.

COUNT I

NON-USE AND ABANDONMENT

12. Upon information and belief, and after efforts to find continued use thereof,

Applicant is not using Applicant’s Mark in United States commerce or in any capacity.

13. Upon information and belief, Applicant discontinued use of Applicant’s Mark

and has an intent not to resume use of Applicant’s Mark for the goods or services claimed in the

Nak’d Application.

14. Evidence of abandonment and cessation of use include Applicant’s dissolution as

an entity, the absolute dearth of any online presence related to Applicant, and Applicant’s

principals having disassociated.

15. The Nak’d Application was suspended on April 6, 2007.

16. On August 19, 2020, more than 13 years later, the Nak’d Application was issued a

Notice of Publication by the USPTO.

17. Upon information and belief, Applicant has not used Applicant’s Mark in at least

the three years prior to August 19, 2020.

3 18. In light of Applicant’s non-use of Applicant’s Mark and the corresponding Nak’d

Application, Applicant is not entitled to registration pursuant to Section 1(a) of the Trademark

Act.

19. In light of Applicant’s non-use of Applicant’s Mark and the corresponding Nak’d

Application and Applicant’s intent not to resume such use, Applicant has abandoned any rights it

may have once had in Applicant’s Mark and in the Nak’d Application.

COUNT II

PRIORITY AND LIKELIHOOD OF CONFUSION

20. Opposer owns Opposer’s NAKED Mark, which was registered on August 18,

2009 with a corresponding date of first use of June 1, 1998.

21. Opposer was assigned Opposer’s NAKED Mark on February 19, 2020.

22. Opposer and Opposer’s predecessor-in-interest have consistently and continually

used Opposer’s NAKED Mark in United States commerce.

23. The first use of Opposer’s NAKED Mark occurred prior to the first use of

Applicant’s Mark.

24. The goods claimed in the Nak’d Application are essentially identical or highly

related to Opposer’s goods and the goods recited in the registration for Opposer’s NAKED Mark

– they are both prevalent in the clothing field.

25. The goods claimed in the Nak’d Application travel in the same channels of trade

and are offered to the same and similar customers as those claimed in Opposer’s NAKED Mark

and Opposer’s NA-KD Marks.

26. The mark applied for in the Nak’d Application closely resembles Opposer’s

NAKED Mark and Opposer’s NA-KD Marks and is likely to cause confusion, mistake, or to

4 deceive consumers regarding the source, sponsorship, or affiliation of the parties’ respective goods.

27. Opposer and consumers would both be injured by the registration of the Nak’d

Application.

28. Specifically, if the Nak’d Application is permitted to register for the goods

specified therein, the resulting likelihood of confusion and any defect, objection to, or fault

found with Opposer’s goods would reflect on and seriously injure the reputation and goodwill

that Opposer has established in its high quality goods.

29. Further, a federal trademark registration in the Nak’d Application would give

Applicant the benefits of the Lanham Act’s presumptions, all to the detriment of Opposer.

30. Accordingly, the Nak’d Application should be refused registration pursuant to 15

U.S.C. § 1052(d).

DATED this 28th day of September, 2020.

RHETT V. BARNEY Lee & Hayes, PC 601 W. Riverside Avenue, Suite 1400 Spokane, WA 99201 Telephone: (509) 944-4642 Fax: (509) 323-8979

Attorneys for Opposer Nakdcom One World AB

5 CERTIFICATE OF SERVICE

I hereby certify that on this 28th day of September, 2020, the foregoing Notice of

Opposition was filed with the Trademark Trial and Appeal Board’s ESTTA online filing system.

RHETT V. BARNEY Lee & Hayes, P.C. 601 W. Riverside Avenue, Suite 1400 Spokane, WA 99201 Telephone: (509) 944-4642 Fax: (509) 323-8979 [email protected]

Attorneys for Opposer Nakdcom One World AB