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 France. 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 tennis 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. ) 2 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 clothing, 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.) 3 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 polo shirt. 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, shoes, bags, and accessories. See Exhibit 8, examples of labels and tags. 4 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 Saks Fifth Avenue, 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. 5 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 Novak Djokovic. 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.