Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA1076631 Filing date: 08/20/2020

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD Proceeding 91244445 Party Plaintiff Lacoste Alligator S.A. Correspondence RICHARD Z LEHV Address FROSS ZELNICK LEHRMAN & ZISSU PC 151 W 42ND ST, 17TH FLOOR NEW YORK, NY 10036 UNITED STATES Primary Email: [email protected] Secondary Email(s): [email protected] 212-813-5900

Submission Testimony For Plaintiff Filer's Name Richard Lehv Filer's email [email protected] Signature /Richard Lehv/ Date 08/20/2020 Attachments Trial Declaration of Michael Azran PDF.pdf(424442 bytes )

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

LACOSTE ALLIGATOR S.A.,

Opposer,

v. Opposition No. 91244445

SOUTHERN SMOCKED COMPANY, LLC,

Applicant.

TRIAL DECLARATION OF MICHAEL AZRAN

Michael Azran declares under penalty of perjury as follows:

1. I am Head of IP Prosecution & Enforcement Americas at Sporloisirs S.A., based in Geneva, Switzerland. Sporloisirs S.A. is an affiliate of Lacoste Alligator S.A. (“Opposer”), and I am an authorized signatory for Opposer.

2. I joined Sporloisirs S.A. in July 2017. As Head of IP Prosecution & Enforcement

Americas, my duties and responsibilities include launching and managing trademark infringement litigation and trademark opposition proceedings in the Americas, including in the

United States; developing and implementing anti-counterfeiting strategies and enforcement actions; and overseeing and managing customs seizures and law enforcement processes related to trademarks. Prior to joining Sporloisirs S.A., I worked for nearly four years as Senior Counsel

Brand Protection and Enforcement at Ralph Lauren, where I was responsible for protection of the POLO and RALPH LAUREN brands in Europe, the Middle East, and Africa. Prior to that, for nearly seven years I was Legal Counsel – Brand Protection Advisor at NIKE, where I was responsible for protection of the NIKE brand in .

3. I am an attorney, admitted to the Paris Bar, and was awarded a post-graduate

diploma, summa cum laude, from Université Pierre Mendès-France, in Intellectual Property,

Industrial Contracts, and New Technology.

4. In my position at Sporloisirs S.A., I am familiar with the history, intellectual

property, and operations of Opposer, including, among other things, Opposer’s use and registration

of its famous alligator trademark and service mark, and its and it use of that mark on products, and

in advertising, sales, and promotion.

5. I submit this declaration as my direct trial testimony in this proceeding, filed by

Opposer against Southern Smocked Company, LLC (“Applicant”). The facts and data set out in

this declaration are based on my own personal knowledge and understanding, information provided

to me as part of my duties and responsibilities by relevant persons at Opposer and its affiliates, or

based on books and records of Opposer, which are prepared, kept, and gathered in the regular course

of business by Opposer. I have access to such books and records as part of my duties and

responsibilities, and rely on them in carrying out my duties and responsibilities.

6. All the Exhibits attached hereto are records kept in the ordinary course of

Opposer’s business or obtained from publicly available sources and kept in the ordinary course

of Opposer’s business. Opposer regularly relies on information and documents of this type in

conducting its business.

I.BUSINESS AND PRODUCTS OF LACOSTE

7. Rene Lacoste, the founder of Opposer, was a legendary French player who,

in the 1920s, won Wimbledon twice, the U.S. Open twice, and the French Open three times.

(Exhibit 1) (History of Lacoste). He also was a part of the French tennis team that twice won the

Davis Cup. (Id. )

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8. Because of his tenacity on the tennis court (“never letting go of my prey”), he was

given the nickname “The Alligator,” and soon began wearing an alligator logo on his tennis

blazer. (Exhibit 2) (photograph of Rene Lacoste); Exhibit 3 at 2)1

9. In 1933, Rene Lacoste and Andre Gillier, who was the owner and president of the

largest French knitwear manufacturing firm of the time, set up a company to manufacture shirts

bearing the Alligator Logo. (Exhibit 3.) The first Lacoste shirts were white tennis shirts, made of a light knitted fabric called “jersey petit piqué,” with short sleeves and ribbed, knitted collars.

(Exhibit 3.) The shirts bore the embroidered Alligator Logo on their chests. Notably, this may have been the first time that a trademark appeared on the outside of an article of , rather than on a label sewn inside the clothing. (Exhibit 4.)

10. In addition to tennis shirts, the new company’s first products included golf and sailing shirts, all bearing an embroidered Alligator logo. Its first catalog appeared in 1933.

(Exhibit 4.) The Alligator Logo first was used in U.S. commerce as least as early as 1950. (Reg.

No. 2,004,314, with first use date of 1950; Exhibit 3 at 4). The list of goods on and in connection with which the Alligator Logo currently is used has expanded greatly since the

1950s, as discussed more fully below.

A. Opposer’s Alligator Design mark

11. The current versions of Opposer’s Alligator Design marks are shown below:

1 Because colloquial French does not distinguish between alligators and crocodiles, this logo sometimes is described as a crocodile logo. Mr. Lacoste was nicknamed “the Alligator” in the U.S., “le Crocodile” in France.)

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Opposer uses these marks (together, the “Alligator Design Mark”) in the United States in connection with its business and its Lacoste brand apparel and other goods.

12. The logo on the left is generally used when the Alligator Design Mark is printed on labels and packaging for Opposer’s products. The logo on the right is generally used when the Alligator Design Mark is embroidered on Opposer’s garments, including the famous Lacoste . Attached as Exhibit 5 are photographs of a wide selection of LACOSTE brand products for men, women, children and babies, bearing the Alligator Design Mark in either or both forms, including shirts, sweaters, pants, jeans, shorts, dresses, skirts, belts, outerwear, active wear, swimwear, and underwear.

13. Of particular significance in this proceeding, where Applicant’s mark is a cartoon- like alligator, Opposer sells numerous clothing items for children that bear cartoon-like alligators

(Exhibit 6), as well as a toy alligator whose appearance is similar to the alligator shown in

Applicant’s mark. Moreover, Opposer’s line of children’s clothing includes girl’s dresses that are similar in design to Applicant’s “smocked” dresses.

14. Opposer licenses the Alligator Design Mark to licensees that manufacture and distribute a wide range of products bearing the mark. As shown in Exhibit 7, Opposer’s licensees offer for sale footwear, handbags, watches, fragrances, eyewear, and home ware.

15. All of Opposer’s products prominently display the Alligator Design Mark. The

Alligator Design Mark appears in several places on Opposer’s products, including on hangtags and neck labels in the case of apparel, on the packaging of products such as sunglasses and perfume, and directly on the products themselves, including on clothing, , bags, and accessories. See Exhibit 8, examples of labels and tags.

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B. Distribution and Sales of Lacoste Products

16. Lacoste products are sold throughout the United States in brick and mortar stores,

including Lacoste boutiques, department stores, and independent retailers, and on the Internet at, e.g., www.lacoste.com. Exhibit 9 shows the home page of Opposer’s website.

17. As of February 2020, Opposer operated over 80 Lacoste boutiques and outlets in

the United States, with stores in well-known shopping meccas such as Madison Avenue and

SoHo in New York City, Rodeo Drive in Beverly Hills, Michigan Avenue in Chicago, and

Lincoln Road in Miami Beach.

18. All Lacoste boutiques prominently feature the Alligator Design Mark on signage

outside and inside the store. Exhibit 10 consists of images of Lacoste boutiques with signage

prominent displaying the Alligator Design Mark.

19. In addition to Opposer’s own stores, Lacoste products are sold in large

department stores like , Neiman Marcus, Nordstrom, Bloomingdale’s, Macy’s,

Kohl’s, and Dillard’s as well as over 6,000 independent retailers throughout the United States.

These department stores and independent retailers also display signage inside their stores that

prominently feature the Alligator Design Mark.

20. In addition, department stores feature Lacoste products on their own online stores.

Exhibit 11 shows online stores of such retailers as Nordstrom, Macy’s, Saks Fifth Avenue, and

Bloomingdale’s featuring Lacoste products.

21. Sales of Lacoste brand apparel and accessories have been substantial. Attached as

Exhibit 12 is a summary of Lacoste’s U.S. sales from 2009-2019. As shown therein, Opposer’s

sales in the U.S. were nearly three hundred million dollars each year. Such sales are substantial

for the apparel industry.

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C. Marketing and Advertising of Opposer’s Products

22. Opposer and its licensees support the Lacoste brand and the products offered

under the Alligator Design Mark with strategic and highly visible advertising. Opposer and its

licensees have advertised the Alligator Design Mark in a variety of media, including newspapers,

magazines, television, outdoor advertising, the Internet, and emails to consumers. Moreover,

Lacoste is worn by celebrity endorsers, including international tennis star .

23. Exhibit 13 consists of representative print advertisements featuring the Alligator

Design Mark in recent years.

24. Exhibit 14 are screenshots of Lacoste television commercials.

25. Exhibit 15 consists of articles in Ad Age and Medium discussing recent Lacoste television commercials.

26. Lacoste also has engaged in high-profile outdoor advertising. Advertisements for

Lacoste products with the Alligator Design Mark have been featured on billboards near high- traffic areas, such as in New York’s Times Square and SoHo neighborhood. Exhibit 16 includes representative samples of highly-visible outdoor advertisements for such products.

27. Lacoste’s Internet advertising also is extensive. In 2015, Lacoste’s website received approximately 10 million visits, in 2016 approximately 10 million visits, in 2017 approximately 11.5 million visits, in 2018 approximately 15.2 million visits, and in 2019 approximately 18.2 million visits. These numbers far exceed the total website visits of such other famous brands as Brooks Brothers, Tommy Hilfiger, and Banana Republic.

28. In addition, Lacoste maintains accounts on numerous social media websites and applications, such as , YouTube, , Pinterest, Instagram, and Tumblr. Attached as Exhibit 17 are printouts from Lacoste’s social media accounts on these platforms. Lacoste

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has a significant number of followers on each platform. For example, Lacoste’s Facebook page

has more than 15 million “likes” and more than 15 million followers, Lacoste’s Instagram page

has over 4.6 million followers, and Lacoste’s Pinterest page has over 2.1 million followers.

Opposer also has 79,000 followers on its YouTube channel.

29. Finally, Lacoste sends email marketing to customers. The emails promote

specific products or sales events and are sent to thousands of U.S. consumers each year.

30. Lacoste and its licensees spend a significant amount of money marketing and

advertising the Lacoste brand and products. In the ordinary course of its business, Lacoste tracks

information about advertising expenditures by itself and its licensees and can run reports

detailing this information. Exhibit 18 is a report that shows U.S. advertising expenditures for the Lacoste brand and products from 2009 to 2019.

31. In the five years before Applicant filed its application for its design mark, Lacoste and its licensees spent the following amounts on U.S. advertising: $7.5 million in 2013; $7.7 million in 2014; $8.7 million in 2015; $7.6 million in 2016; and $8.2 million in 2017.

D. Renown of Lacoste and Its Products

32. Due to the popularity of Lacoste, its products, and the Lacoste Alligator Design, they receive significant unsolicited coverage in the press. Exhibit 19 is a selection of articles that mention Lacoste, its products, or its advertising efforts. Some of these articles specifically mention the renown of the Lacoste Alligator Design. For example, Exhibit 3, an article in

Smithsonian Magazine entitled “The Story Behind the Lacoste Crocodile Shirt,” discusses how the Lacoste polo and its “iconic logo” has “spawned many imitators and admirers,” including

“ponies (Ralph Lauren), marlins (Tommy Bahama), [and] eagles (American Eagle).” (Exhibit

3).

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II. LACOSTE’S TRADEMARK REGISTRATIONS AND ENFORCEMENT EFFORTS

33. To protect its famous Alligator Design Mark, Lacoste has secured federal registrations for the mark. Such registrations include the following:

• U.S. Registration No. 2004314 for “polo shirts, sweatshirts, blousons, shirts,

pants, shorts, skirts, dresses, jogging suits, sweaters, jackets, parkas, headwear,

robes, swimwear, footwear, socks, belts, gloves” in International Class 25 for the

design shown here:

• U.S. Registration No. 1108987 for “MEN'S, WOMEN'S AND CHILDREN'S

SPORT SHIRTS AND SWEATERS, MEN'S SOCKS, OUTER SHORTS, HATS

AND CAPS, WOMEN'S AND CHILDREN'S DRESSES” in International Class

25 for the design shown here:

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• U.S. Registration No. 3129817 for “Sweaters, blazers, shirts, polo shirts, dress

shirts, turtle neck shirts, tee-shirts, sweatshirts, knit shirts, jackets, parkas,

trousers, shorts, bermuda shorts, track suit trousers, track suits, skirts, dresses,

beachwear, socks, wrist bands, head bands, scarves, headwear, neckwear, gloves,

underwear, footwear” in International Class 25 for the design shown here:

• U.S. Registration No. 3220138 for “sweaters, shirts, polo shirts, dress shirts,

turtle neck shirts, tee-shirts, sweatshirts, knit shirts, trousers, shorts, bermuda

shorts, track suit trousers, track suits, skirts, dresses, beachwear, socks, wrist

bands, head bands, scarves, headwear, neckwear, gloves, underwear, footwear” in

International Class 25 for the design shown here:

Attached as Exhibit 20 are copies of records from the United States Patent and Trademark

Office with respect to the registrations listed above.

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34. Lacoste actively monitors the trademark registry for applications for marks that

are confusingly similar to its Alligator Design Mark, and takes necessary measures to prevent the

registration of such confusingly similar marks, including by opposing the registration of the

marks before the Trademark Trial and Appeal Board. Lacoste also sends cease-and-desist letters

to parties who are selling counterfeit merchandise or are using marks that are confusingly similar

to the Alligator Design Mark.

35. Exhibit 21 consists of Printouts of the records of the Trademark Trial and Appeal

Board showing Oppositions that Opposer has won involving design marks similar to the

Alligator Design mark and applications for such marks that have been withdrawn as a result of

our efforts.

III. HARM TO LACOSTE IF APPLICANT IS PERMITTED TO REGISTER ITS MARK

36. Applicant has applied to register the design shown here

(the “Applied-for Mark”) for use in connection with “Children's and infant's apparel, namely,

jumpers, overall sleepwear, pajamas, rompers and one-piece garments; Dresses for babies and

children; Shirts for babies and children; Shortalls; Shorts for babies and children; Swimsuits” in

International Class 25. I view the Applied-for Mark as highly similar to Opposer’s Alligator

Design Mark. Because the Alligator Design Mark and the products sold thereunder are so well

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known among consumers, I am greatly concerned that consumers are likely to incorrectly believe that Applicant’s clothing sold under the similar Applied-for Mark originate or are otherwise associated with Lacoste. Moreover, given the similarity of the parties’ respective marks and products, I am concerned that Applicant’s registration and use of the Applied-for Mark will dilute the distinctiveness of the Alligator Design Mark in the minds of consumers.

I declare under penalty of perjury under the laws of the United States of America, this

24th day of April 2020 at Geneva, Switzerland, that the foregoing is true and correct.

Michael Azran

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CERTIFICATE OF SERVICE

I hereby certify that on this 20th day of August 2020, a true and correct copy of the TRIAL DECLARATION OF MICHAEL AZRAN was served by email on counsel for Applicant at the following email addresses: [email protected], [email protected].

/Richard Lehv/ Richard Lehv