LYFE Star Design Notice of Opposition.Pdf(746691 Bytes )

Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA1087063 Filing date: 10/07/2020

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 Jockey International, Inc. Granted to Date 10/07/2020 of previous ex- tension Address 2300 60TH STREET KENOSHA, WI 53140 UNITED STATES

Attorney informa- ANDREA L. CALVARUSO tion KELLEY DRYE & WARREN LLP 101 PARK AVENUE NEW YORK, NY 10178 UNITED STATES Primary Email: [email protected] Secondary Email(s): [email protected], [email protected] 2128087800

Docket Number Applicant Information

Application No. 88585060 Publication date 06/09/2020 Opposition Filing 10/07/2020 Opposition Peri- 10/07/2020 Date od Ends Applicant STARR LYFE 25 NASH DRIVE CHELSEA, ME 04330 UNITED STATES Goods/Services Affected by Opposition

Class 025. First Use: 0 First Use In Commerce: 0 All goods and services in the class are opposed, namely: Tee Shirts, Sweatshirts, Sweaters, Sweat- pants, Hoodies, Headbands, bandanas, Winter hats, Baseball caps, Windbreakers, Basketball shorts, sweat-Wristbands, running shoes, spiked shoes for track and field, walking shoe, sandals, flip- flops,thong footwear, sneakers, boots, loafers, moccasins, undershirts, men's underwear, women's underwear, children's underwear, socks, men's bedroom slippers, women's bedroom slippers, children's bedroomslippers, ankle socks, quarter length socks, crew-length socks, mid-calf lengthsocks, calf length socks, knee length socks, thigh high socks, polo shirts, dress shirts, rompers, skorts, yoga pants, leggings, scarfs, silky durag head wraps, beanies, pile caps, fitted caps, bucket hats, baseball caps Grounds for Opposition Priority and likelihood of confusion Trademark Act Section 2(d) Dilution by blurring Trademark Act Sections 2 and 43(c) Marks Cited by Opposer as Basis for Opposition

U.S. Registration 723133 Application Date 06/13/1960 No. Registration Date 10/24/1961 Foreign Priority NONE Date Word Mark LIFE Design Mark Description of NONE Mark Goods/Services Class 025. First use: First Use: 1960/05/25 First Use In Commerce: 1960/05/25 Men's and Boys' Underwear

U.S. Application 87543897 Application Date 07/26/2017 No. Registration Date NONE Foreign Priority NONE Date Word Mark LIFE Design Mark Description of NONE Mark Goods/Services Class 025. First use: First Use: 0 First Use In Commerce: 0 Undergarments, namely, bralettes, camisoles, tank tops, and slips

U.S. Application 87553218 Application Date 08/02/2017 No. Registration Date NONE Foreign Priority NONE Date Word Mark LIFE Design Mark Description of NONE Mark Goods/Services Class 025. First use: First Use: 1960/05/25 First Use In Commerce: 1960/05/25 Underwear; undergarments, namely, slip shorts and shapewear

U.S. Registration 5734693 Application Date 09/19/2017 No. Registration Date 04/23/2019 Foreign Priority NONE Date Word Mark JOCKEY LIFE Design Mark Description of NONE Mark Goods/Services Class 025. First use: First Use: 2019/02/09 First Use In Commerce: 2019/02/09 Underwear; undergarments, namely, camisoles, tank tops, slips, slip shorts, andshapewear Attachments LYFE Star Design Notice of Opposition.pdf(746691 bytes )

Signature /Andrea L. Calvaruso/ Name Andrea L. Calvaruso Date 10/07/2020

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

IN THE MATTER OF TRADEMARK APPLICATION:

SERIAL NO. 88/585,060 for the Mark:

PUBLISHED IN THE OFFICIAL GAZETTE ON JUNE 9, 2020

JOCKEY INTERNATIONAL, INC., ) ) Opposer, ) Serial No.: 88/585,060 ) Opposition No.: ______v. ) ) STARR LYFE, ) ) Applicant ) )

NOTICE OF OPPOSITION

Jockey International, Inc. (“Opposer” or “Jockey”), a Wisconsin corporation with a principal place of business at 2300 60th Street, Kenosha, Wisconsin 53140, believes its

trademark rights will be damaged by the registration of the mark (the “LYFE

Mark”) in Class 25 for “tee shirts, sweatshirts, sweaters, sweatpants, hoodies, headbands, bandanas, winter hats, baseball caps, windbreakers, basketball shorts, sweat-wristbands, running shoes, spiked shoes for track and field, walking shoe, sandals, flip-flops, thong footwear,

sneakers, boots, loafers, moccasins, undershirts, men’s underwear, women’s underwear, children’s underwear, socks, men’s bedroom slippers, women’s bedroom slippers, children’s bedroom slippers, ankle socks, quarter length socks, crew-length socks, mid-calf length socks, calf length socks, knee length socks, thigh high socks, polo shirts, dress shirts, rompers, skorts, yoga pants, leggings, scarfs, silky durag head wraps, beanies, pile caps, fitted caps, bucket hats, baseball caps,” as set forth in Application Serial No. 88/585,060 filed by Starr Lyfe

(“Applicant”) on August 20, 2019, and published in the Official Gazette on June 9, 2020 (the

“Application”), and, having been granted multiple extensions of time to oppose the Application, up to and including October 7, 2020, hereby opposes the same.

As grounds for the opposition, Opposer alleges as follows:

1. Founded in 1876, Opposer is a leading innovator, designer, marketer, retailer and licensor of undergarments and intimates and is one of the world’s most beloved and recognized brands. Opposer has been a pioneer brand in the apparel industry for more than 140 years through its unwavering commitment to quality, comfort, fashion, innovation and value. It has a long history of cutting edge innovations in the apparel industry, such as its invention of the world’s first men’s underwear brief in 1934. From humble, entrepreneurial beginnings in men’s hosiery and underwear, Opposer has emerged as a global force and world-class brand in the apparel industry, with the mission of “satisfying the human need for comfort” in apparel products for men, women, boys, girls, and babies.

2. Today, Opposer sells many different product lines globally, including undergarments, intimate apparel, shapewear, activewear and a wide variety of other items including sleepwear, loungewear, athleisure apparel, socks and other clothing apparel

(collectively the “Jockey Goods”).

3. The Jockey Goods are sold in more than 147 countries around the world. In the

United States, the Jockey Goods are sold in a wide variety of locations, including its own

JOCKEY branded retail stores, its online e-commerce site located at www.jockey.com, its direct- to-consumer catalog, as well as a variety of third-party retailers from department stores such as

Nordstrom’s, Macy’s, Kohls and JC Penney, Dillard’s, Von Maur, Lord & Taylor, Belk, Fred

Meyer, and Century 21, to big box stores such as Walmart and Target, as well as televised home shopping and specialty retail stores like QVC.

4. Opposer has owned and continuously used its trademark LIFE in U.S. commerce in connection with the promotion and sale of undergarments for 60 years. Prior to the 1960s,

American men’s underwear generally came in only one color – white. Once again, in 1960,

Opposer led the way in modernizing the underwear market with the introduction of its line of

LIFE branded men’s undergarments, which were offered in different colors, fabrics, and cuts.

5. Since its first use to promote and sell men’s underwear in 1960, Opposer has expanded its use of the LIFE mark to promote and sell a variety of women’s undergarments, foundation garments and shapewear, such as bralettes, camisoles, tank tops, slips, and slip shorts

(collectively, the “LIFE Goods”). Today, Opposer’s LIFE Goods are offered for sale in brick- and-mortar and online e-commerce stores throughout the United States and overseas.

6. Over the years, Opposer’s LIFE mark has been featured in some of the most creative and popular advertising in the industry. The first advertising campaign for the LIFE branded products helped to usher in the era self-expression. For instance, comedian Wally Cox, an early TV spokesman for Opposer’s LIFE branded products, claimed that his normally timid persona was transformed when girded with the colorful array of Opposer’s LIFE branded

underwear. Since 1960, the LIFE Goods have also appeared in different media including in

magazines such as Sports Illustrated and Esquire, among others.

7. Since it first adopted the mark in 1960, Opposer has achieved significant sales, exposure, and recognition of goods sold under with its LIFE mark. Today, the LIFE mark remains an integral part of the heritage and family of well-known and enduring Jockey brands.

Because of Opposer’s widespread, longstanding and continuous use of its LIFE mark in connection with the promotion and sale of its products for sixty years, its LIFE mark has developed enormous goodwill among consumers and has become exclusively associated in the minds of the public with Opposer and its well-known apparel products. The goodwill associated with the LIFE mark is of inestimable value to Opposer.

8. In addition to its common law rights in the LIFE mark, Opposer owns an incontestable, valid and subsisting U.S. trademark registration for the LIFE mark in connection with underwear (U.S. Registration No. 723,133). This registration serves as prima facie evidence of Opposer’s ownership of the LIFE mark and its exclusive right to use said mark. The registration’s incontestable status is also conclusive evidence of Opposer’s exclusive right to use the registered mark in commerce on or in connection with the goods identified in the registration.

9. Opposer also owns a valid and subsisting U.S. Trademark Registration No.

5,734,693 for the mark JOCKEY LIFE in connection with “underwear; undergarments, namely, camisoles, tank tops, slips, slip shorts, and shapewear,” which registered on April 23, 2019, prior to the filing date of the Application.

10. Opposer also owns pending U.S. trademark applications for the LIFE mark for the

LIFE Goods. A list of Opposer’s valid and subsisting U.S. trademark registrations and pending

applications for the LIFE marks is included below and is made part of the record in this proceeding.1

App. No. / App. Date / Mark Goods Reg. No. Reg. Date LIFE 72/098,870 June 13, 1960 Men’s and boys’ underwear. 723,133 October 24, 1961 LIFE 87/543,897 July 26, 2017 Undergarments, namely, bralettes, camisoles, tank tops, and slips. LIFE 87/553,218 August 2, 2017 Underwear; undergarments, namely, slip shorts and shapewear. JOCKEY LIFE 87/614,486 September 19, 2017 Underwear; undergarments, namely, camisoles, tank 5,734,693 April 23, 2019 tops, slips, slip shorts, and shapewear.

11. True and correct copies of records from the U.S. Patent and Trademark Office

Trademark Status and Document Retrieval database demonstrating Opposer’s ownership and the valid and subsisting status of the above-referenced trademark registrations and applications are attached hereto as Exhibit A.

12. By virtue of its registrations for and use of the LIFE Mark, Opposer has standing to bring this opposition.

13. Upon information and belief, Applicant is a sole proprietorship composed of

Veronica Cochrane, organized under the laws of Maine, with an address of 25 Nash Drive,

Chelsea, Maine 04330.

14. In August 2019, nearly sixty years after Opposer first used and registered its well- known LIFE mark, Applicant filed Application Serial No. 88/585,060 based upon its alleged

1 The marks included in this chart, together with Jockey’s common law rights in the LIFE mark resulting from its use of the mark to promote and sell the LIFE Goods, are referred to collectively as the “LIFE Marks.”

intention to use the LYFE Mark in connection with “tee shirts, sweatshirts, sweaters, sweatpants, hoodies, headbands, bandanas, winter hats, baseball caps, windbreakers, basketball shorts, sweat- wristbands, running shoes, spiked shoes for track and field, walking shoe, sandals, flip-flops, thong footwear, sneakers, boots, loafers, moccasins, undershirts, men’s underwear, women’s underwear, children’s underwear, socks, men’s bedroom slippers, women’s bedroom slippers, children’s bedroom slippers, ankle socks, quarter length socks, crew-length socks, mid-calf length socks, calf length socks, knee length socks, thigh high socks, polo shirts, dress shirts, rompers, skorts, yoga pants, leggings, scarfs, silky durag head wraps, beanies, pile caps, fitted caps, bucket hats, baseball caps” in Class 25 (“Applicant’s Goods”).

15. Upon information and belief, Applicant did not use the LYFE Mark in commerce prior to the date it filed the Application.

16. The LYFE Mark was published for opposition in the June 9, 2020 issue of the

Official Gazette and, as set forth above, Opposer was granted multiple extensions of time to oppose the LYFE Mark, up to and including October 7, 2020.

17. The LYFE Mark is nearly identical to Opposer’s longstanding and well-known

LIFE mark and is confusingly similar in appearance, sound, connotation, and commercial impression to Opposer’s LIFE Marks. The change in spelling and stylized elements of the LYFE

Mark does not mitigate the likelihood of confusion with Opposer’s LIFE Marks.

18. The Application seeks to register the LYFE Mark in connection with goods that are identical or substantially similar to Opposer’s LIFE Goods that are and have been promoted and sold in connection with the LIFE Marks for many years, and upon information and belief, will be marketed and sold through the same and/or similar channels of trade where Opposer sells its LIFE Goods under the LIFE Marks.

19. Opposer has priority of use with respect to the marks at issue in this proceeding.

Applicant filed its Application nearly 60 years after Opposer first used and registered its LIFE mark in connection with the promotion and sale of undergarments, and long after the LIFE

Marks gained widespread recognition, goodwill and fame as a result of longstanding use in connection with the promotion and sale of Opposer’s LIFE Goods.

20. Opposer’s registration for the JOCKEY LIFE mark, and its currently pending applications for the mark LIFE in connection with a variety of apparel items, each also pre-date the filing date of the Application.

21. As a matter of law, based on Opposer’s federal trademark registration for its LIFE and JOCKEY LIFE trademarks, Applicant was on notice of Opposer's prior rights in the mark before seeking to register the LYFE Mark in Class 25.

22. There never has been any relationship between Applicant and Opposer, and

Opposer has never authorized or consented to Applicant’s use or application to register the

LYFE Mark opposed herein.

23. Applicant’s registration and use of the LYFE Mark is likely to create confusion and deceive consumers into mistakenly believing that Applicant’s Goods originate with or are sponsored, endorsed, licensed, or authorized by Opposer, or are in some way associated with or connected to Opposer. Such confusion would irreparably harm and damage Opposer because it has no control over the nature or quality of the goods provided or produced by Applicant under the LYFE Mark.

24. Opposer’s LIFE mark has achieved fame which qualifies the mark for protection from dilution pursuant to 15 U.S.C. §1125(c). Opposer’s LIFE mark acquired such fame prior to

Applicant’s selection and/or adoption of the LYFE Mark, and prior to the date the Application was filed with the USPTO.

25. Applicant’s registration and use of the LYFE Mark for Applicant’s Goods is also likely to dilute the strength of Opposer’s registered LIFE mark as source designation for

Opposer’s apparel products.

26. For all of the foregoing reasons, Opposer will be damaged by registration of the

LYFE Mark and registration of the Application should be refused.

WHEREFORE, by its undersigned attorney, Opposer respectfully requests that this

Notice of Opposition be sustained, and that registration of Application Serial No. 88/585,060 be refused.

Date: October 7, 2020 Respectfully submitted,

KELLEY DRYE & WARREN LLP

By: /Andrea L. Calvaruso/ Andrea L. Calvaruso Kelli D. Ortega 101 Park Avenue New York, NY 10178 (212) 808-7800 [email protected]

Attorneys for Opposer JOCKEY INTERNATIONAL, INC.

EXHIBIT A

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Word Mark LIFE Goods and IC 025. US 039. G & S: Men's and Boys' Underwear. FIRST USE: 19600525. FIRST USE IN COMMERCE: 19600525 Services Mark Drawing (1) TYPED DRAWING Code Serial Number 72098870 Filing Date June 13, 1960 Current Basis 1A Original Filing 1A Basis Registration 0723133 Number Registration October 24, 1961 Date Owner (REGISTRANT) Cooper's, Incorporated CORPORATION WISCONSIN Kenosha WISCONSIN

(LAST LISTED OWNER) Jockey International, Inc. CORPORATION BY CHANGE OF NAME WISCONSIN Legal Department 2300 60th Street Kenosha WISCONSIN 53140

Assignment ASSIGNMENT RECORDED Recorded Type of Mark TRADEMARK Register PRINCIPAL Affidavit Text SECT 15. SECT 8 (6-YR). SECTION 8(10-YR) 20111018. Renewal 3RD RENEWAL 20111018 Live/Dead LIVE Indicator

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Word Mark LIFE Goods and Services IC 025. US 022 039. G & S: Undergarments, namely, bralettes, camisoles, tank tops, and slips Standard Characters Claimed Mark Drawing Code (4) STANDARD CHARACTER MARK Serial Number 87543897 Filing Date July 26, 2017 Current Basis 1B Original Filing Basis 1B Published for Opposition September 1, 2020 Owner (APPLICANT) Jockey International, Inc. CORPORATION WISCONSIN 2300 60th Street Kenosha WISCONSIN 53140 Attorney of Record Andrea L. Calvaruso Prior Registrations 0723133 Type of Mark TRADEMARK Register PRINCIPAL Live/Dead Indicator LIVE

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Word Mark LIFE Goods and Services IC 025. US 022 039. G & S: Underwear; undergarments, namely, slip shorts and shapewear. FIRST USE: 19600525. FIRST USE IN COMMERCE: 19600525 Standard Characters Claimed Mark Drawing Code (4) STANDARD CHARACTER MARK Serial Number 87553218 Filing Date August 2, 2017 Current Basis 1A Original Filing Basis 1A Published for September 1, 2020 Opposition Owner (APPLICANT) Jockey International, Inc. CORPORATION WISCONSIN 2300 60th Street Kenosha WISCONSIN 53140 Attorney of Record Andrea L. Calvaruso Prior Registrations 0723133 Type of Mark TRADEMARK Register PRINCIPAL Live/Dead Indicator LIVE

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Word Mark JOCKEY LIFE Goods and IC 025. US 022 039. G & S: Underwear; undergarments, namely, camisoles, tank tops, slips, slip shorts, and shapewear. Services FIRST USE: 20190209. FIRST USE IN COMMERCE: 20190209 Standard Characters Claimed Mark Drawing (4) STANDARD CHARACTER MARK Code Serial Number 87614486 Filing Date September 19, 2017 Current Basis 1A Original Filing 1B Basis Published for December 19, 2017 Opposition Registration 5734693 Number Registration Date April 23, 2019 Owner (REGISTRANT) Jockey International, Inc. CORPORATION WISCONSIN Legal Department 2300 60th Street Kenosha WISCONSIN 53140 Prior Registrations 0391692;0723133;3258066 Type of Mark TRADEMARK Register PRINCIPAL Live/Dead LIVE Indicator

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