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 ; overcoats; topcoats; cardigans; sweaters; vests and waist- coats; open-necked shirts; cuffs; collars for ; blouses; polo shirts; shirts for suits; corsets for underclothing; combinations for clothing; camisoles; T-shirts; and ; fur stoles; shawls; scarves; gloves and mittens for clothing; belts for clothing; rain ; leather ; 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 (); bustle holder bands for obi (obiage); bustles fo1° obi-knots

(obiage-shin); waist strings for (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 (); string fasteners for haori (haeri-himo); pleated skirts for formal kimonos (hal

Japanese style socl~s covers ( covers); gloves and mittens for clothing; bandanas; thermal supporters for clothing; mufflers; ear° muffs for clothing; nightcaps; headgear• for wear; ga~•ters; 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; soles for repair; Japanese style, wooden (); 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 (zori); Japanese toe-strap sandals (asaura-zori);

3 3254723-1 Japanese style sandals of leather; ; Japanese style sandals of felt; Japanese footwear of

rice straw (); 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;

special footwear for sports; golf shoes; soccer shoes; ski boots; snowboalding shoes; gymnastic

shoes; elilnbing boots; bowling shoes; boxing shoes; hockey shoes; baseball shoes; rugby shoes;

footwear for- track and field athletics; horse-riding boots" in Class 25, Serial No. 79/143,045

("Applicant's RANDA Application")

7. On September 2, 2014, Applicant anlendec~ the description of goods in

Applicant's RANDA Application to the following: "folding briefcases; shoulder bags;

briefcases; carry-on bags; handbags; Boston bags; rucksacks; leather; filr pelts; ai~ificial fiu" in

Class 18; and "Evening dresses; children's wear, namely, rompers and one-piece gal•ments;

j~elcets; sweat pants; slcir~s; trousers; formalwear, namely, dresses, gowns, trousers and footwear;

overcoats; topcoats; cardigans; sweaters; vests and waistcoats; open-necked shirts; cuffs; collars

for clothing; blouses; polo shirts; shirts for shits; corsets for Lulderclothing; combinations for

clothing; camisoles; T-shirts; socks and stockings; fair 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; welts for shoes and boots; horse-riding boots" in Class 25 (the "Applicant's Goods")

8. On May 12, 2015, Applicant's RANDA Application was published for

opposition.

9. On June 2, 2015, Opposer sought an extension of time itz which to file an

opposition agaiizst Applicant's RANDA Application and said extension was granted.

~! 324723-I 10. Applicant's RANDA Application consists of a marls that is identical to Opposer's

RANDA Mark.

ll. Applicant's marls is likely to cause confession with Opposer's RANDA Mark as the marks ire identical. IIZ addition, the goods specified in Applicant's RANDA Application are either identical to or highly related to the goods and services for which Opposer's RANDA 1VIar1c is used.

12. The classes for which Applicant seeks to register Applicant's RANDA Marl< are identical to the classes of gods for which Opposer's RANDA Marls is used, namely Classes 18 and 25.

13. Applicant's RANDA Application was filed long after Opposer began use of

Opposer's RANDA Marls. In addition, Applicant's Goods will most likely be marketed through the same channels of trade alid to the same class of consumers as the goods of Opposer.

14, Prospective purchasers of Applicant's Goods are likely to erroneously believe that such goods are produced by oz• under the authority of Opposer, or to erroneously assume that there is soiree other trade connection between Opposer and Applicant.

I5. Opposer is fiirthet• being harmed ley Applicant's RANDA Application as it has

Veen cited as a bal• to Opposer's RANDA Marls Application.

16. Applicant's RANDA inaxk so resembles Opposei•'s RANDA Marls that, wheal used on or iii conjunction with the hoods of Applicant:

(a) It is likely to cause contusion, or to cause mistake, or to deceive;

(b) It falsely suggests a colu~ection with Opposer; and

(c) It damages Opposer's goodwill in its aforementioned marks.

5 WHEREFORE, Opposer prays that its Opposition to the registration of Application Serial

No. 79/143,0 5 be sustained and the mark refused registration.

Please recognize Mary L. Grieco and Safia A. ~lnand, who are members of the Bar of the

State o1~ New Yorlc, and with the firm of Olshan Frome Woloslcy LLP, 1oc~ted at Park Avenue

Tower, 65 East SSt~' Street, New Yoi1c, New York 10022, as attorneys for Opposer Randa Corp.

Dated: July 9, 201 ~ Respectfully submitted,

OLSHAN FROME WOLOSKY LLP

~ ~

Maly I,. U~-1 eco Safia A. Anand Par1c Avenue Tower 65 East 55"' Street New Yorl<, New Yorlc 10022 (212) 451-2300 ~ttoNneysfor Opposer

D 3254723-1 CERTIFICATE OF SERVICE

I hereby cei~ify that on this day, July 9, 2015, a true and correct copy of the foregoing document entitled:

NOTICE OF OPPOSITION was served upon Applicatzt by Federal Express, addressed as follows:

T.B. Co., LTD. 3-20, Uineda 3-chome Kita-ku,; Osaka-shi; Osaka 530-0001 JAPAN and was served ot7 Applicant's counsel by prepaid, first class U.S. mail, addressed as follows:

Maureen C. Kassne~• Panitch Schwarze Belisario &Nadel LLP 2005 Mai-1

~~ SAFIA`~. ANAi~ill

3251723-1