Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA566410 Filing date: 10/22/2013 IN THE 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 JD SPORTS PLC Granted to Date 10/23/2013 of previous extension Address HOLLINSBROOK WAY, PILSWORTH BURY, LANCASHIRE, BL9 8RR

Attorney Duane M. Byers information Nixon & Vanderhye 901 N . Glebe Road, 11th Floor Arlington, VA 22203 UNITED STATES [email protected] Applicant Information

Application No 85835067 Publication date 06/25/2013 Opposition Filing 10/22/2013 Opposition 10/23/2013 Date Period Ends Applicant Raggiani, Giuliana 51 Leonard Street New York, NY 10013 UNITED STATES Goods/Services Affected by Opposition

Class 025. All goods and services in the class are opposed, namely: Grounds for Opposition

Priority and likelihood of confusion Trademark Act section 2(d) Marks Cited by Opposer as Basis for Opposition

U.S. Registration 3811015 Application Date 03/05/2009 No. Registration Date 06/29/2010 Foreign Priority 10/22/2008 Date Word Mark GIOGOI Design Mark Description of The mark consists of the wording "Gio-Goi" adjacent to the design of five Mark intersecting diagonal bars, with two diagonal bars on the left intersecting the three diagonal bars on the right. Goods/Services Class 003. First use: Soaps; perfumery; essential oils; cosmetics; non-medicated toiletries; skin care preparations, namely, moisturisers; hair lotions and hair care preparations; dentifrices; deodorants for personal use; cleaning, polishing, scouring and abrasive preparations Class 009. First use: Phonograph records, compact discs, audio and video tapes, audio and video cassettes, audio and video cartridges, all bearing sound recording, video recordings, data, images, games, graphics, text, programmes or information in the fields of fashion, music, sport or entertainment; downloadable electronic publications, namely, newsletters and brochures featuring fashion, music, sport or entertainment; musical sound and video recordings; digital music downloadable from the Internet; mobile phones; mobile phone covers; mobile phone accessories, namely, mobile phone covers and downloadable ringtones and wallpapers; phone cards, namely, pre-paid telephone calling cards, magnetically encoded; credit cards, namely, magnetically encoded credit card; contact lenses, spectacles and ; eyeglass cases; goggles for sports; protective , protective helmets for sports Class 014. First use: ; precious stones; horological and chronometric instruments; clocks; ; wristwatches; straps; jewellery; body jewellery; key rings of precious metal; tie bars; badges of precious metal; paste jewellery Class 018. First use: Bags, namely, , clutch bags, school bags and luggage bags; satchels; holdalls; rucksacks; trunks and travelling bags; cosmetic and toilet bags sold empty; purses; wallets; cases of leather or leatherboard; leather shoulder belts; and parasols Class 025. First use: , namely, , , windcheaters, , , pants, , tracksuit bottoms, , , jumpers, cardigans, sweaters, , , , t-shirts, vests, , swimming trunks, swimming shorts, , , wraps, dressing , pyjamas, night shirts, , underwear, , knickers, , , gloves, and ; ; , namely, , , balaclavas and visors; belts for wear Class 035. First use: Advertising services provided by means of the Internet; operation and supervision of loyalty and incentive schemes, namely, providing incentive award programs for customers and employees through the distribution of prepaid stored value cards for the purpose of promoting and rewarding loyalty; advertising and promotional services; advertising by mail order, namely, direct mail advertising; the bringing together, for the benefit of others, of a variety of goods, enabling customers to conveniently view and purchase those goods by means of a retail store, by catalogue, by mail order, via an Internet Website, by online or ecommerce means or by any other telecommunications means including via the Internet, all specialising in the marketing of general consumer goods; provision of consumer information and advisory services from a Website relating to mail order and shopping by e-commerce means; provision of business information and advisory services to distributors from a Website relating to mail order and shopping by e-commerce means; production of television and radio advertisements, namely, production of radio and television commercials; information, advisory and consultancy services relating to all the aforesaid in the fields of fashion, music, sport or entertainment

U.S. Registration 3570270 Application Date 04/03/2008 No. Registration Date 02/03/2009 Foreign Priority NONE Date Word Mark GIO-GOI Design Mark Description of The mark consists of the stylized words "Gio-Goi". Mark Goods/Services Class 009. First use: Pre-recorded phonograph records, compact discs, audio and video tapes, audio and video cassettes, audio and video cartridges, all bearing sound recordings, video recordings, data, images, games, graphics, text, programmes or information in the fields of fashion, music, sport or entertainment; downloadable electronic publications, namely, newsletters and brochures featuring fashion, music, sport or entertainment; musical sound and video recordings; digital music downloadable from the Internet; mobile phones; mobile phone covers; Downloadable mobile phone accessories, namely, ringtones and wallpapers; phone cards, namely, pre-paid telephone calling cards, magnetically encoded; credit cards, namely, magnetically encoded credit cards; contact lenses, spectacles and sunglasses; eyeglass cases; goggles for sports; protective helmets, protective helmets for sports

U.S. Registration 3643699 Application Date 03/10/2008 No. Registration Date 06/23/2009 Foreign Priority 02/26/2008 Date Word Mark GIO-GOI Design Mark Description of The mark consists of the wording "GIO-GOI" adjacent to the design of five Mark intersecting diagonal bars, with two diagonal bars on the left intersecting the three diagonal bars on the right. Goods/Services Class 003. First use: Soaps; perfumery; essential oils; cosmetics; non-medicated toiletries; skin care preparations, namely, moisturizers; hair lotions and hair care colouring, cleaning and styling preparations; dentifrices; deodorants for personal use; cleaning, polishing, scouring and abrasive preparations Class 009. First use: Phonograph records, compact discs, audio and video tapes, audio and video cassettes, audio and video cartridges, all bearing sound recordings, video recordings, data, images, games, graphics, text, programmes or information in the fields of fashion, music, sport or entertainment; downloadable electronic publications, namely, newsletters and brochures featuring fashion, music, sport or entertainment; musical sound and video recordings; digital music downloadable from the Internet; mobile phones; mobile phone covers; mobile phone accessories, namely, downloadable ringtones and graphics in the nature of wallpapers for mobile phones; phone cards, namely, pre-paid telephone calling cards, magnetically encoded; credit cards, namely, magnetically encoded credit cards; contact lenses, spectacles and sunglasses; eyeglass cases; goggles for sports; protective helmets, protective helmets for sports Class 014. First use: Jewellery, precious stones; horological and chronometric instruments; clocks; watches; wristwatches; watch straps; costume jewellery; body jewellery; key rings of precious metal; tie bars; badges of precious metal; paste jewellery, namely, imitation jewellery Class 016. First use: Paper; cardboard; boxes made from cardboard; printed matter, namely, newsletters, brochures, catalogues, posters, flyers, leaflets, journals, magazines, newspapers, billboard stickers featuring fashion, music, sport or entertainment; photographs; stationery; plastic materials for packaging, namely, plastic bubble packs for packaging; cheque book and credit card holders; gift wrapping paper, paper gift wrapping ribbons, paper gift tags, paper gift and bows; tissue paper; colouring books; book marks; loose leaf binders; stationery- type portfolios; wire-bound notebooks; note pads and writing pads; diaries, daily planners; calendars; scrapbook albums; sketchbook albums; photograph albums; stickers; decals; slateboards for writing; pencils; pens; pencil erasers; decorative pencil- ornaments; pen cases and pencil cases; pen boxes and pencil boxes; pencil sharpeners; marking chalk; markers; posters; postcards; trading cards; greeting cards; pennants made of paper; printed publications, namely, newsletters, brochures, catalogues, posters, flyers, leaflets, journals, magazines and newspapers featuring fashion, music, sport or entertainment; carrier bags made of paper Class 018. First use: Bags, namely, handbags, clutch bags, sports bags, school bags and luggage bags; satchels; holdalls; rucksacks; trunks and travelling bags; cosmetic and toilet bags sold empty; purses; wallets; cases of leather or leatherboard; leather shoulder belts; umbrellas and parasols Class 025. First use: Clothing, namely, jackets, coats, windcheaters, trousers, shorts, pants, cargo pants, tracksuit bottoms, suits, gilets in the nature of padded vests, jumpers, cardigans, sweaters, skirts, dresses, shirts, t-shirts, vests, blouses, swimming trunks, swimming shorts, bikinis, swimsuits, wraps, dressing gowns, pyjamas, night shirts, nightgowns, underwear, bras, knickers, boxer shorts, briefs, gloves, socks and scarves; footwear; headgear, namely, hats, caps, balaclavas and visors; belts for wear Class 035. First use: Advertising services provided by means of the Internet; operation and supervision of loyalty and incentive schemes, namely, providing incentive award programs for customers and employees through the distribution of prepaid stored value cards for the purpose of promoting and rewarding loyalty; advertising and promotional services; advertising by mail order, namely, direct mail advertising; the bringing together, for the benefit of others, of a variety of goods, enabling customers to conveniently view and purchase those goods by means of a retail store, by catalogue, by mail order, via an Internet Website, by online or ecommerce means or by any other telecommunications means including via the Internet, all specialising in the marketing of general merchandising goods of others; provision of consumer information and advisory services from a Website relating to mail order and shopping by e-commerce means; provision of business information and advisory services to distributors from a Website relating to mail order and shopping by e-commerce means; production of television and radio advertisements, namely, production of radio and television commercials; information, advisory and consultancy services relating to all the aforesaid in the fields of fashion, music, sport or entertainment Class 041. First use: Entertainment services, namely, presentation of live show performances, and conducting parties; social club services, namely, arranging, organizing and hosting social events, get-togethers, and parties for club members; provision and organization of entertainment, recreational, fashion, musical and sporting events, namely, presentation of live show performances, and exhibitions in the nature of fashion shows, music shows and sports-related shows; entertainment in the nature of live music concerts and fashion shows; organizing community fashion and cultural events, namely, fashion shows, live musical concerts, and sporting events in the nature of soccer competition; information, advisory and consultancy services for all the aforesaid services in the fields of fashion, music, sport and entertainment

U.S. Registration 3576470 Application Date 03/04/2008 No. Registration Date 02/17/2009 Foreign Priority NONE Date Word Mark GIO-GOI Design Mark Description of NONE Mark Goods/Services Class 009. First use: Phonograph records, compact discs, audio and video tapes, audio and video cassettes, audio and video cartridges, all bearing sound recordings, video recordings, data, images, games, graphics, text, programmes or information in the fields of fashion, music, sport or entertainment; downloadable electronic publications, namely, newsletters and brochures featuring fashion, music, sport or entertainment; musical sound and video recordings; digital music downloadable from the Internet; mobile phones; mobile phone covers; mobile phone accessories, namely, ringtones and wallpapers downloadable via global computer networks and wireless devices; phone cards, namely, pre-paid telephone calling cards, magnetically encoded; credit cards, namely, magnetically-encoded credit cards; contact lenses, spectacles and sunglasses; eyeglass cases; goggles for sports; protective helmets, protective helmets for sports

U.S. Registration 3418632 Application Date 04/11/2007 No. Registration Date 04/29/2008 Foreign Priority 10/17/2006 Date Word Mark GIO-GOI Design Mark Description of The mark consists of two stylized guitars intersecting. The wording "GIO-GOI" Mark appears below the design. Goods/Services Class 025. First use: Clothing, namely, T-shirts; trousers; ; culottes; shorts; pants, dungarees; ; jackets; suits, ; coats; anoraks; blousons; windcheaters; tracksuits; ; sleeveless jackets; tunics; visors; cardigans; sweaters; pullovers; jerseys; polo-neck jumpers; ; swimming ; bathing trunks; beachwear; vests; ; jumpers; underwear; brassieres; socks; ; ; ; knickers; long johns; slips; bikinis; briefs; boxer shorts; bodices; ; ; corsetry; dresses; blouses; shirts; skirts; ; ; nightdresses; neckerchiefs; bath robes; scarves; ; ties; gloves; mittens, belts; cloth bibs; ; polo shirts; sweatshirts; jogging trousers; footwear; headgear, namely, hats, caps, and balaclavas; belts as clothing

U.S. Registration 3891682 Application Date 06/05/2007 No. Registration Date 12/21/2010 Foreign Priority 12/06/2006 Date Word Mark GIO-GOI Design Mark Description of NONE Mark Goods/Services Class 025. First use: Clothing, namely, T-shirts, trousers, jeans, culottes, shorts, pants, dungarees, overalls, jackets, suits, waistcoats, coats, anoraks, blousons, windcheaters, tracksuits, parkas, sleeveless jackets, tunics, visors, cardigans, sweaters, pullovers, jerseys, polo-neck jumpers, robes, swimming costumes, bathing trunks, beachwear, vests, blazers, jumpers, underwear, brassieres, socks, tights, stockings, panties, knickers, long johns, slips, bikinis, briefs, boxer shorts, bodices, undershirts, leotards, corsetry, dresses, blouses, shirts, skirts, pajamas, nightshirts, nightdresses, neckerchiefs, bath robes, scarves, shawls, ties, gloves, mittens, cloth bibs, aprons, polo shirts, sweatshirts, jogging trousers; headwear, namely, hats, caps, berets and balaclavas; belts as clothing; footwear

U.S. Registration 4250309 Application Date 06/05/2007 No. Registration Date 11/27/2012 Foreign Priority 12/06/2006 Date Word Mark GIO-GOI Design Mark Description of The mark consists of the letters and hyphen "Gio-Goi". Mark Goods/Services Class 025. First use: First Use: 1988/12/31 First Use In Commerce: 2011/08/31 Clothing, namely, T-shirts, trousers, jeans, shorts, pants, jackets, coats, anoraks, blousons, windcheaters, tracksuits, parkas, sleeveless jackets, tunics, cardigans, sweaters, pullovers, jerseys, polo-neck jumpers, swimming costumes, bathing trunks, beachwear, vests, jumpers, underwear, socks, briefs, boxer shorts, bodices, undershirts, dresses, blouses, shirts, scarves, gloves, mittens, polo shirts, sweatshirts, jogging trousers; headwear, namely, hats, caps, belts as clothing; footwear

U.S. Registration 3250144 Application Date 03/09/2005 No. Registration Date 06/12/2007 Foreign Priority NONE Date Word Mark GIOGOI Design Mark Description of NONE Mark Goods/Services Class 003. First use: [ SOAPS; PERFUMERY; ESSENTIAL OILS; COSMETICS; HAIR LOTIONS; DENTRIFRICES; CLEANING PREPARATIONS FOR FACE, HAND AND BODY ] Class 025. First use: CLOTHING, NAMELY, JACKETS, TROUSERS, SHORTS, PANTS, CARGO PANTS, TRACKSUIT BOTTOMS, SUITS, GILETS, JUMPERS, CARDIGANS, SWEATERS, SKIRTS, DRESSES, SHIRTS, T-SHIRTS, VESTS, BLOUSES, SWIMMING TRUNKS, SWIMMING SHORTS, [ BIKINIS, ] SWIMSUITS, WRAPS, DRESSING GOWNS, PYJAMAS, NIGHT SHIRTS, NIGHTGOWNS, [ BRAS, KNICKERS, ] BOXER SHORTS, BRIEFS, GLOVES, SOCKS AND SCARVES; HEADGEAR, NAMELY, HATS AND CAPS; [ FOOTWEAR, NAMELY, , , SPORTS SHOES, AND ] Attachments 5027-159_Notice_of_Opposition_filed_22_october_2013.pdf(96534 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 First Class Mail on this date.

Signature /dmb/ Name Duane M. Byers Date 10/22/2013 NV Ref: 5027-159

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

) JD SPORTS FASHION PLC ) ) Opposer, ) ) Opposition No. v. ) Application Serial No. 85/835,067 ) GIULIANA RAGGIANI ) Applicant. )

NOTICE OF OPPOSITION

Opposer, JD SPORTS FASHION PLC, with a business address of Hollinsbrook Way,

Pilsworth, Bury, Lancashire BL9 8RR, United Kingdom, hereby opposes registration of the mark

GIU GIU that is the subject of application Serial No. 85/835,067, published on June 25, 2013, and requests that registration to Applicant be refused.

As grounds in support of its opposition, Opposer asserts as follows:

1. Opposer is the owner of U.S. Trademark Registration No. 3,811,015 for the mark

trademark Gio-Goi and design, in International Classes 3, 9, 14, 18, 25, and 35;

Registration No. 3,570,270 for the trademark Gio-Goi in International Class 9;

Registration No. 3,643,699 for the trademark GIO-GOI and design in International

Classes 3, 9, 14, 16, 18, 25, 35, and 41; Registration No. 3,576,470 for the trademark

GIO-GOI in International Class 9; Registration No. 3,418,632 for the trademark

GIO-GOI and design in International Class 25; Registration No. 3,891,682 for the

trademark GIO-GOI in International Class 25; Registration No. 4,250,309 for the

trademark Gio-Goi in International Class 25; Registration No. 3,250,144 for the

trademark GIOGOI in International Classes 3, 25. These registrations are valid,

1 2246748 subsisting, unrevoked, and uncancelled. All of the foregoing trademarks are

collectively referred to herein as the GIO-GOI trademarks.

2. Applicant has filed an application to register the mark GIU GIU for "Sweaters," in

International Class 25. The application was filed on March 5, 2009, and was assigned

Serial No. 85/835,067. The application is an "intent-to-use"application.

3. Opposer has duly registered its GIO-GOI trademarks in International Class 25 and

other Classes and its US usage rights and registered rights in these GIO-GOI

trademarks date back to well before any date of U.S. use or U.S. trademark

application of the applicant for the GIU GIU trademark in International Class 25 or

any other Class.

4. Applicant's GIU GIU trademark so resembles Opposer's GIO-GOI trademarks as to

be likely to cause confusion, mistake, or deception within the meaning of Section 2(d)

of the Trademark Act. Applicant is attempting to register the confusingly similar

GIU GIU trademark for the same, similar, and/or related goods. Consumers are likely

to be confused and/or are likely to think that Applicant and Opposer is the same or are

affiliated in some fashion.

5. Opposer will be harmed by the registration of Applicant’s GIU GIU trademark in

International Class 25.

2 2246748 WHEREFORE, Opposer prays that the opposition be sustained and that registration to

Applicant be refused.

Date: October 22, 2013 Respectfully submitted,

/Duane M. Byers/ Duane M. Byers NIXON & VANDERHYE, P.C. 901 North Glebe Road, 11th Floor Arlington, Virginia 22203 Phone: 1-703-786-7421 Authorized e-mail: [email protected]

Attorneys for Opposer, JD SPORTS FASHION PLC

CERTIFICATE OF SERVICE

It is hereby certified that a true copy of the foregoing was served on Applicant by depositing same in the United States mail, first class, postage pre-paid, on this date, addressed to Applicant's counsel of record:

DAVID H.E. BURSIK, ESQ.

401 HAMBURG TPKE, SUITE 202

WAYNE, NEW 07470-2139

/Duane M. Byers/

3 2246748