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Notice of Opposition Opposer Information Applicant Information Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA682666 Filing date: 07/09/2015 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 Randa Corp. Granted to Date 07/11/2015 of previous ex- tension Address 417 Fifth Avenue11th Floor New York, NY 10016 UNITED STATES Attorney informa- Mary L. Grieco, Safia A. Anand tion Olshan Frome Wolosky LLP 65 East 55th Street New York, NY 10022 UNITED STATES [email protected], [email protected], [email protected] Phone:212-451-2300 Applicant Information Application No 79143045 Publication date 05/12/2015 Opposition Filing 07/09/2015 Opposition Peri- 07/11/2015 Date od Ends International Re- 1193211 International Re- 07/03/2013 gistration No. gistration Date Applicant J.B. Co., LTD. 3-20, Umeda 3-chome Osaka 530-0001, JAPAN Goods/Services Affected by Opposition Class 018. First Use: 0 First Use In Commerce: 0 All goods and services in the class are opposed, namely: folding briefcases; shoulder bags; briefcases; carry-on bags; handbags; Boston bags; rucksacks; leather; fur pelts; artificial fur Class 025. First Use: 0 First Use In Commerce: 0 All goods and services in the class are opposed, namely: Evening dresses; children's wear, namely, rompers and one-piece garments; jackets; sweat pants; skirts; trousers; formalwear, namely, dresses, gowns, trousers and footwear; overcoats; topcoats; cardigans; sweaters; vests and waist- coats; open-necked shirts; cuffs; collars for clothing; blouses; polo shirts; shirts for suits; corsets for underclothing; combinations for clothing; camisoles; T-shirts; socks and stockings; fur stoles; shawls; scarves; gloves and mittens for clothing; belts for clothing; rain boots; leather shoes; sandal for shoes; sneaker; boots; women's shoes; inner soles for shoes and boots; heelpieces for shoes and boots; insoles for shoes and boots; weltsfor shoes and boots; horse-riding boots Grounds for Opposition False suggestion of a connection Trademark Act section 2(a) Priority and likelihood of confusion Trademark Act section 2(d) Dilution Trademark Act section 43(c) Marks Cited by Opposer as Basis for Opposition U.S. Application 86012246 Application Date 07/17/2013 No. Registration Date NONE Foreign Priority NONE Date Word Mark RANDA Design Mark Description of NONE Mark Goods/Services Class 025. First use: First Use: 0 First Use In Commerce: 0 Ascots; Belts; Footwear; Gloves; Jackets; Neckwear; Pants; Pocket squares; Scarves; Shirts; Socks; Suits; Suspenders U.S. Registration 1819025 Application Date 02/16/1993 No. Registration Date 02/01/1994 Foreign Priority NONE Date Word Mark RANDA Design Mark Description of NONE Mark Goods/Services Class 025. First use: First Use: 1935/07/19 First Use In Commerce: 1935/07/19 neckties Class 040. First use: First Use: 1935/07/19 First Use In Commerce: 1935/07/19 [manufacturing of neckwear to the specifications of others] U.S. Application/ Registra- NONE Application Date NONE tion No. Registration Date NONE Word Mark RANDA Goods/Services Apparel and fashion accessory items, including but not limited to, belts, neckwear, footwear, leather goods, wallets, luggage, and re- lated accessories Attachments 86012246#TMSN.png( bytes ) 74358973#TMSN.png( bytes ) Notice of Opposition - Randa Corp .pdf(345578 bytes ) Certificate of Service The undersigned hereby certifies that a copy of this paper has been served upon all parties, at their address record by Overnight Courier on this date. Signature /safiaaanand/ Name Mary L. Grieco, Safia A. Anand Date 07/09/2015 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD In the Matter of Trademailc Application No. 79/1 3,045 For the Mark: RANDA Date Published: May 12, 2015 RAND~1 CORP., Opposer, v. Opposition. No.: J.B. CO., LTD., Applicant. ---------------------------------------------------------------x NOTICE OF OPPOSITION Opposer Ranch Corp.( "Opposer'"), a coipora~ion existing under the laws of the State of New 3ersey with an address of 417 Fifth Avenue, 11th Floor, New Yorlc, New Yorlc 10016, believes that it will be damaged by the registration of the above-ideiztified mark filed by Applicant J.B. Co., Ltd.( "Applicant"), and opposes fl1e same. Opposer alleges, on knowledge as to its own acts and other~~ise on information and belief, as follows: 1. Opposer is a well-lazown company in the United Stites. Beginning in 1935 and continuing to the present, Opposer and predecessors have engaged in marketing and advertising of products and services using the trademailc RANDA (the "RANDA Mark''). Opposer and its predecessors ire currently using and have been tzsin~ the RANDA Mark in the rnanufaeture, distribution and sale of a number of apparel and fashion accessory items, including but not limited to, neckwear, since at least as early as 1935, leather goods since at least as early as 2001, and luggage since at least as early as 2007, and Opposer has offered such products for sale to its 1 324723-1 private 1abe1 customers throughout the United States. 2. On or about July 2, 3003, Opposer began operating the website http:/lwww.randa.net/ and continues to do so today. 3. Opposel's wehsite uses the RANDA Mark prominently in connection with the manufacture, dish-ibu~ion and sale of belts, neckwear, footwear, wallets, luggage, and related accessories. 4. As a result of Opposer's sales efforts and promotion of its producCs and services, Opposer elzjoys significant common law rights in Opposer's RANDA Mark, and Opposer's RANDA Marl< has come to signify products and services originating wifh Opposer alld to symbolize goodwill belonging to Opposer of iinlnense value. 5. Opposer owns a pending application for• its RANDS Marls for '`Ascots; Belts; Footwear; Gloves; Jackets; Neckwear; Pants; Pocket sgtiai-es, Scarves; Shirts; Socks; Suits; Suspenders" in Class 025, Serial No. 86/012,246( "Opposer's RANDA Mark Application") 6. On July 3, 2013, ~pplieant filed an application for RANDA for "Dog shoes; dog collars; clothing for dogs, dog bellybands (clothing); folding briefcases; shoulder bags; Gladstone bags; Japanese wielcer trunks (lcori); briefcases; suitcases; carry-on bags; triu~lcs; handbags; Boston bags; schoolchildren's backpacks; rucksacks; charm bags (ommainori-ire); card cases; shopping begs (including wheeled shopping bags); pluses; lcey cases; money pouches; wallets; luggage label holders; business card cases; telescopic umbrellas; Japanese paper umbrellas (lcaralcasa); Japanese oiled-papef• umbrellas (janome-gasa); rainproof parasols; beach umbrellas; parasols; umbrellas; umbrella covers; umbrella handles; ine~al parts of umbrellas; frames for ui~lbrellas; bags for umbrellas; leather; leather straps; rawhides; raw skins; tanned leather; fir" in Class 18 and `Evening dresses; children's wear; jackets; jogging pants; ~2sa~23-~ sweat pants; suits; skirts: sl:i jacl.ets; slci pants; trousers; smocks; formalwear; overcoats; topcoats; mantles; raincoats; cardigans; sweaters; vests and waistcoats; open-necked shirts; cuffs; collars for clothing; sort shirts; blouses; polo shirts; shirts for suits; night gowns; negligees; Japanese sleeping robes (neinaki); pajamas; bath robes; undershirts; corsets for underclothing; combinations for clothing; chemises; drawers and underpants; slips; panties, shorts and briefs; brassieres; petticoats; swimwear; swimming caps; camisoles; T-shirts; Japanese traditional clothing; sash bands for kimono (obi); bustle holder bands for obi (obiage); bustles fo1° obi-knots (obiage-shin); waist strings for kimonos (lcoshihimo); undershirts for kimonos (ltoshimalci); undershirts for kimonos (juban); tightening-up strings for kimonos (datejime); wrap belts for lcirn~nos (datemalci); hill-length lcinzonos (nagagi); short overcoat For kimono (haori); string fasteners for haori (haeri-himo); pleated skirts for formal kimonos (hal<aina); detachable neelcpieees for kimonos (hal7eri), sleep masks; aprons for clothing; collar protectors for wear; socks Ind stockings; puttees a~1d gaiters, fur stoles; shawls; scarves; Japanese style socks (tajbi); Japanese style socl~s covers (tabi covers); gloves and mittens for clothing; bandanas; thermal supporters for clothing; mufflers; ear° muffs for clothing; nightcaps; headgear• for wear; ga~•ters; sock suspenders; suspenders; waistbands; belts for clothing; rain boots; leather shoes; sandal for shoes; sneaker; Japanese slit-toed work footwe~x (jilcatabi); boots; women's shoes; winter boots; infants' shoes and boots; inner soles for shoes and boots; heelpieces for shoes and boots; insoles for shoes aild boots; welts for shoes and boots; rubber soles for jilcatabi; footwear uppers; tips for footwear; shoe soles for repair; Japanese style, wooden clogs (geta); high rain clogs (~shida); low wooden clogs (lcoina- ?eta}; sandal-clods; low wooded clogs (hiyori-geta); metal fittings for Japanese style wooden clogs; wooden bodies for Japanese style clogs; toe straps for Japanese style wooden clogs; Japanese style sandals (zori); Japanese toe-strap sandals (asaura-zori); 3 3254723-1 Japanese style sandals of leather; slippers; Japanese style sandals of felt; Japanese footwear of rice straw (waraji); slipper soles; uppers for Japanese style sandals; soles for Japanese style , sandals; tippers of woven ratt~l for Japanese style sandals; toe straps for Japanese style s~idals;
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