Tommy Hilfiger v. Jumbo Bright - Complaint

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Case 1:13-cv-06386-NRB Document 1 Filed 09/11/13 Page 1 of 13 JUDGE UCH~~l\~r: MANATT, PHELPS & PHILLIPS, LLP Darren W. Saunders 7 Times Square Ne w York, Ne w York 10036 (212) 790-4500 telephone (212) 790-4545 fax [email protected] Attorneys fo r Plaintiffs Tommy Hilfiger U.S.A. , Inc. and Tommy HilfigerLicensing LLC UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF NEW YORK TOMMY HILFIGER U.S.A., INC. and TOMMY HILFIGER LICENSING LLC, 1 3 t:?: Q ; _ p t._j/' 6 Civil Action No. laintiffs, -------- v. JUMBO BRI GHT TRADING LIMITED, Defendant. COMPLAINT FOR DECLARATORY JUDGMENT Plaintiffs Tommy Hilfiger U.S.A., Inc. ("Tommy Hilfiger U.S.A.") and Tommy Hilfiger Licensing-LLC ("T ommy Hilfig er Licensing") (collectively, "Plainti ffs"), by and through their attorneys, Manatt, Phelps & Phillips, LLP, for their complaint against Jumbo Bright Trading Limited ("Defendant") allege as follows: NATURE OF ACTION AND RELIEF SOUGHT 1. This is an action und er the Declaratory Judgment Act, 28 U.S.C. § 2201, et eq., for a declaration that a vertical stripe pattern, which Defendant uses on the inside lining of footwear and claims is a common la w trademark, does not function as a trademark because it is merely ornamental and lacks secondary meaning, and further, that Plaintiffs' use of a vertical 202147273.1

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JUDGE U C H ~ ~ l \ ~ r :MANATT, PHELPS & PHILLIPS, LLP

Darren W. Saunders

7 Times Square

New York, New York 10036

(212) 790-4500 telephone

(212) 790-4545 [email protected]

Attorneys for Plaintiffs

Tommy Hilfiger U.S.A., Inc. and

Tommy HilfigerLicensing LLC

UNITED STATES DISTRICT COURT

SOUTHERN DISTRICT OF NEW YORK

TOMMY HILFIGER U.S.A., INC. and

TOMMY HILFIGER LICENSING LLC,

13 t:?: Q; _p t._j/' 6

Civil Action No.laintiffs, - - - - - - - -v.

JUMBO BRIGHT TRADING LIMITED,

Defendant.

COMPLAINT FOR DECLARATORY JUDGMENT

Plaintiffs Tommy Hilfiger U.S.A., Inc. ("Tommy Hilfiger U.S.A.") and Tommy Hilfiger

Licensing-LLC ("Tommy Hilfiger Licensing") (collectively, "Plaintiffs"), by and through their

attorneys, Manatt, Phelps & Phillips, LLP, for their complaint against Jumbo Bright Trading

Limited ("Defendant") allege as follows:

NATURE OF ACTION AND RELIEF SOUGHT

1. This is an action under the Declaratory Judgment Act, 28 U.S.C. § 2201, et e q . ,

for a declaration that a vertical stripe pattern, which Defendant uses on the inside lining of

footwear and claims is a common law trademark, does not function as a trademark because it is

merely ornamental and lacks secondary meaning, and further, that Plaintiffs' use of a vertical

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stripe pattern on the inside lining ofTOMMY HILFIGER footwear is not likely to cause

confusion and does not infringe Defendant's claimed trademark.

2. This action arises out ofDefendant's repeated demands that Plaintiffs cease and

desist from using a vertical stripe pattern on the interior lining ofTOMMY HILFIGER footwear.

PARTIES

3. Tommy Hilfiger U.S.A., Inc. is a Delaware corporation with a principal place of

business at 601 West 26th Street, New York, New York 10001.

4. Tommy Hilfiger Licensing LLC is a Delaware limited liability company with a

principal place ofbusiness at 601 West 26th Street, New York, New York 10001.

5. Upon information and belief, Defendant Jumbo Bright Trading Limited is a

corporation organized and existing under the laws ofHong Kong, with a principal place of

business at 161-167 Des Voeux Road, Hong Trade Center, 7/f, Central, Hong Kong.

JURISDICTION AND VENUE

6. This Court has subject matter jurisdiction pursuant to 28 U.S.C. §§ 1331, 1338.

The claims alleged in this Complaint arise under the Declaratory Judgment Act, 28 U.S.C. §

2201, and the Lanham Act, 15 U.S.C. § 1051, et seq.

7. This Court has personal jurisdiction over Defendant because, upon information

and belief, Defendant has established minimum contacts with this forum and further, Defendant

has substantial, continuous, and systemic contacts with the State ofNew York. Upon

information and belief, Defendant sells its footwear products through retailers located in the

State ofNew York. By virtue of these actions, Defendant has purposefully availed itself of the

privilege of conducting business in this State and in this judicial District.

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8. Venue is proper in this District under 28 U.S.C. §§ 1391(b) and (c) because, upon

information and belief, a substantial part of the events giving rise to Plaintiffs' claims occurred in

this District and because the Defendant is subject to personal jurisdiction in this District.

9. An actual case or controversy exists between the parties. Defendant has

repeatedly threatened to take action against Plaintiffs, has asserted that Plaintiffs are engaging in

acts of trademark infringement, and has demanded that Plaintiffs immediately cease and desist

from using the pattern in issue -- a vertical stripe pattern on the interior lining of footwear

products.

GENERAL ALLEGATIONS

10. PlaintiffTommy Hilfiger U.S.A. and its predecessors have for many years, and

well before Defendant's claimed first use of a vertical stripe pattern on footwear products, used a

vertical stripe pattern on TOMMY HILFIGER footwear, attire and accessory products, and in

particular, on the interior of those products.

11. The TOMMY HILFIGER stripe pattern is typically a blue and white alternating

vertical stripe pattern, but is also used in other colors. This pattern has come to be known as, and

is referred to by Plaintiffs and the trade as the TOMMY HILFIGER "Ithaca Stripe." Attached

hereto as Exhibit A are true and correct photographs of several examples of TOMMY

HILFIGER products bearing the Ithaca stripe.

12. Upon information and belief, Defendant distributes footwear under the brand

name CHARLES PHILIP.

13. Defendant claims to own common law trademark rights to a vertical stripe pattern

used on the interior lining of its footwear, along with three vertical stripes on the shoe rim near

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the heel. Attached as Exhibit B is a true and correct image of one ofDefendant's shoes showing

the claimed vertical stripe pattern.

14. On April19, 2012, Defendant filed two trademark applications in the U.S. Patent

and Trademark Office ("USPTO") for a "vertical stripe pattern on the inside lining of the shoe"

with "a three vertical stripe design on the shoe rim near the heel area." In the applications,

Defendant claims a date of first use of the pattern of July 8, 2010. Attached as Exhibit Care

true and correct copies of the trademark applications.

15. On August 13, 2012, the USPTO issued an Office Action in which it refused

registration of the applied-for marks on grounds, inter alia, that the claimed pattern is not

inherently d i s t i n c ~ i v e , the applicant has not demonstrated sufficient proof of acquired

distinctiveness, and the claimed mark "is merely a decorative or ornamental feature of the goods

... and does not function as a trademark to identify and distinguish applicant's goods from those

of others and to indicate the source of applicant's goods." Attached as Exhibit Dis a true and

correct copy of the August 13, 2012 Office Action.

16. On December 28, 2012, Defendant presented arguments and evidence to the

USPTO in an attempt to overcome the USPTO's refusals, and in particular in an attempt to prove

acquired distinctiveness.

17. On February 15, 2013, the USPTO issued another Office Action in which it

maintained its refusal to register the claimed mark for failure to prove acquired distinctiveness

and failure of the applied-for patterns to function as a trademark. The USPTO stated, inter alia,

that Defendant has not shown that its mark has become distinctive of the goods by reason of

substantially exclusive and continuous use in commerce. Attached as Exhibit E is a true and

correct copy ofthe February 15,2013 Office Action.

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18. Defendant's response to the second Office Action was due by August 15,2013.

As of today' s date, the public electronic records of the USPTO do not reflect that a response has

been filed.

19. TOMMY HILFIGER has used its Ithaca Stripe pattern on the interior lining of its

footwear products since well before the Defendant's claimed date of first use of its stripe pattern

of July 8, 2010. By way of example, attached as Exhibit F is a true and correct image of

TOMMY HILFIGER shoes from the Women's Spring 2007 collection.

20. As part of the Spring 2013 TOMMY HILFIGER women's footwear collection,

various styles of women's footwear which contained the Ithaca Stripe on the interior lining of the

shoes were sold, and continue to be sold, by retailers in the United States. Attached hereto as

Exhibit G is a true and correct photograph ofTOMMY HILFIGER women's footwear from the

Spring 2013 collection showing the Ithaca Stripe on the interior lining.

21. In a letter dated March 25, 2013, outside counsel for Defendant wrote to Plaintiffs

and claimed that Defendant owns common law trademark rights to the vertical stripe pattern used

on the interior lining for its shoes, and further claimed that Plaintiffs' use of a vertical stripe

pattern on the interior lining ofTOMMY HILFIGER shoes infringes its common law trademark

rights. Counsel demanded that Plaintiffs "immediately cease and desist" from using

"confusingly similar designs" on any TOMMY HILFIGER footwear products. Attached hereto

as Exhibit His a true and correct copy ofDefendant's March 25, 2013 letter.

22. By letter dated April22, 2013, counsel for a licensee ofplaintiffTommy Hilfiger

Licensing ("Licensee") responded on behalfofPlaintiffs and explained the reasons why

Defendant's vertical stripe pattern does not function as a trademark, and further, even if it did,

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why there is no likelihood of confusion between the parties' respective products. Attached

hereto as Exhibit I is a true and correct copy of Plaintiffs letter dated April 22, 2013.

23. Defendant's counsel sent a second letter dated May 10, 2013 in which Defendant

continued to assert ownership of common law trademark rights in the vertical stripe pattern and

continued to demand that Plaintiffs cease manufacturing, selling and advertising footwear

products containing a vertical stripe pattern on the interior lining. Attached as Exhibit J is a true

and correct copy ofDefendant's letter dated May 10, 2013.

24. Plaintiffs, through counsel for the Licensee, responded on June 12, 2013 and

further explained the reasons why it believes that Defendant does not possess common law

trademark rights in the vertical stripe pattern and making clear that Plaintiffs will not agree to

discontinue manufacturing, selling or advertising the subject TOMMY HILFIGER footwear.

Attached as Exhibit K is a true and correct copy ofPlaintiffs letter dated June 13, 2013.

25. Defendant sent a third letter dated July 16, 2013 in which Defendant again

asserted trademark rights in the vertical stripe pattern and continued to demand that Plaintiffs

immediately discontinue selling the subject TOMMY HILFIGER footwear. Defendant stated

that it has litigated over its claimed mark in the past and "will need to evaluate all legal remedies

available to it" in the event that Plaintiffs wish to continue using a vertical stripe pattern.

Attached hereto as Exhibit Lis a true and correct copy of Defendant's July 16, 2013 letter.

26. Plaintiffs are entitled to use a vertical stripe pattern on the interior lining of

footwear products; and in view ofDefendant's threats and allegations, Plaintiffs are in need of,

and are entitled to, a judicial declaration that: (a) Defendant's vertical stripe pattern does not

function as an indicator of source and therefore Defendant does not own any common law

trademark rights in this pattern; and (b) to the extent that the Defendant's vertical stripe pattern

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does function as a common law trademark, there is no likelihood of confusion between the

TOMMY HILFIGER footwear bearing a vertical stripe pattern used on the interior lining of the

footwear on the one hand, and Defendant or its footwear, on the other.

27. Defendant 's repeated demands that Plaintiffs cease and desist from using the

vertical stripe pattern in issue has created a reasonable apprehension of litigation, and

accordingly, there exists an actual case or controversy.

FIRST CLAIM FOR RELIEF

(Declaratory Judgment of Failure of Stripe Design to Function as Trademark-

Merely Ornamental)

28. Plaintiffs repeat and reallege the allegations contained in paragraphs 1 to 27 of

this Complaint as if fully set forth herein.

29. Defendant claims to own common law trademark rights to a vertical stripe pattern

on the inside lining of footwear shoe with three vertical stripes on the shoe rim near the heel

area.

30. Defendant's claimed trademark is a simple design consisting of vertical stripes

which is merely ornamental, and is a decorative feature ofthe footwear products on which the

pattern is used.

31. The use of a vertical stripe pattern on the lining and on the heel of a footwear

product fails to function as a trademark because it fails to identify or distinguish Defendant's

goods from those of any other footwear company.

32. Defendant's claim of exclusive rights to its supposed mark is contrary to the

Lanham Act, 15 U.S.C.§ 1051, et seq., and further outside of the scope of any cognizable claim

of rights Defendant may have under the Lanham Act.

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33. Notwithstanding, Defendant claims that Plaintiffs' use of a vertical stripe pattern

in the lining of any footwear products constitutes trademark infringement, false designation of

origin, and unfair competition, and, under threat of litigation, demands that Plaintiffs cease use of

their stripe pattern as a lining for footwear products in commerce.

34. An actual, present and justiciable controversy exists between Plaintiffs and

Defendant concerning the right to sell Plaintiffs' footwear using a stripe pattern on the interior

lining free from Defendant's interference.

35. Plaintiffs seek declaratory judgment from this Court that the use of a vertical

stripe pattern on the interior of a footwear product is not capable of protection under trademark

law because it is merely ornamental and does not indicate a single source for footwear products

to purchasers and the general public.

36. Plaintiffs seek declaratory judgment from this Court that Defendant's claimed

common law trademark does not constitute a valid, protectable trademark.

SECOND CLAIM FOR RELIEF

(Declaratory Judgment of Failure of Stripe Design to Function as Trademark-

Aesthetically Functional)

37. Plaintiffs repeat and reallege the allegations contained in paragraphs 1 to 36 of

this Complaint as if fully set forth herein.

38. Defendant claims to own common law trademark rights to a vertical stripe pattern

on the inside lining of footwear shoe with three vertical stripes on the shoe rim near the heel

area.

39. Defendant's claim of exclusive rights to Defendant's claimed trademark is

contrary to the Lanham Act, 15 U.S.C. § 1051, et seq., and further in contravention ofthe

doctrine of aesthetic functionality.

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40. Notwithstanding, Defendant alleges that Plaintiffs' use of a vertical stripe pattern

on the lining of any footwear products constitutes trademark infringement, false designation of

origin, and unfair competition, and, under threat of litigation, demands that Plaintiffs cease use of

a stripe pattern on the lining for footwear products in commerce.

41. An actual, present and justiciable controversy exists between Plaintiffs and

Defendant concerning the right to sell Plaintiffs' footwear using a vertical stripe pattern on the

interior lining free from Defendant's interference.

42. Accordingly, Plaintiffs seek declaratory judgment from this Court that the use of a

stripe pattern on the interior of a footwear product is not capable of being protected under

trademark law because it significantly hinders the ability of other footwear competitors to fairly

compete in the marketplace.

43. Plaintiffs seek declaratory judgment from this Court that Defendant's claimed

common law trademark fails to constitute a valid, protectable trademark.

THIRD CLAIM FOR RELIEF

(Declaratory Judgment of Failure of Stripe Design to Function as Trademark-

Lack of Secondary Meaning)

44. Plaintiffs repeat and reallege the allegations contained in paragraphs 1 to 43 of

this Complaint as if fully set forth herein.

45. Defendant claims to own common law trademark rights to a vertical stripe pattern

on the inside lining of footwear shoe with three vertical stripes on the shoe rim near the heel

area.

46. Defendant's claimed trademark is a simple pattern consisting ofvertical stripes

which is not inherently distinctive, and therefore Defendant must prove that the pattern has

acquired distinctiveness.

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47. The use of vertical stripes in the lining and on the rim of a footwear product fails

to function as a trademark because it has not acquired distinctiveness such that it indicates the

source of Defendant's goods and distinguishes those goods from those sold by any other

footwear company.

48. Defendant 's claim of exclusive rights to its claimed mark is contrary to the

Lanham Act, 15 U.S.C. § 1051, et seq., and further outside ofthe scope of any cognizable claim

of rights Defendant may have thereunder.

'49. Notwithstanding, Defendant alleges that Plaintiffs' use of a vertical stripe pattern

on the lining of its footwear products constitutes trademark infringement, false designation of

origin, and unfair competition, and, under threat of litigation, demands that Plaintiffs cease use of

a stripe pattern on the interior lining for footwear products in commerce.

50. An actual, present and justiciable controversy exists between Plaintiffs and

Defendant concerning the right to sell Plaintiffs' footwear using a stripe pattern free from

Defendant's interference.

51. Plaintiffs seek declaratory judgment from this Court that Defendant's claimed

trademark is not capable ofbeing protected under trademark law because it has not acquired

distinctiveness such that the claimed trademark functions as an indicator of source of footwear

products to purchasers or the general public.

52. Plaintiffs seek declaratory judgment from this Court that Defendant's claimed

common law trademark fails to constitute a valid, protectable trademark.

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./

• • • • • •

FOURTH CLAIM FOR RELIEF

(Declaratory Judgment of No Trademark or Trade Dress Infringement,

No False Designation ofOrigin, and No Unfair Competition)

53. Plaintiffs repeat and reallege the allegations contained in paragraphs 1 to 52 of

this Complaint as if fully set forth herein.

54. Defendant claims that Plaintiffs' use of a vertical stripe pattern constitutes

trademark infringement and/or trade dress infringement, false designation of origin, and unfair

competition, and, under threat of litigation, demands that Plaintiffs cease use of its vertical stripe

pattern on footwear products in commerce.

55. An actual, present and justiciable controversy exists between Plaintiffs and

Defendant concerning the right to sell Plaintiffs' footwear using a stripe pattern free from

Defendant's interference.

56. Plaintiffs seek declaratory judgment from this Court that the use of a vertical

stripe pattern on the interior lining of footwear products is not likely to cause confusion as to the

source, affiliation, or sponsorship ofPlaintiffs' goods with that ofDefendant, among an

appreciable number of purchasers.

57. Plaintiffs seek declaratory judgment from this Court that use of a vertical stripe

pattern on the interior lining for footwear products in interstate commerce does not constitute

trademark or trade dress infringement.

58. Plaintiffs seek declaratory judgment from this Court that use of a vertical stripe

pattern on the interior lining for footwear products in interstate commerce does not constitute

false designation of origin

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59. Plaintiffs seek declaratory judgment from this Court that use of a vertical stripe

pattern on the interior lining for footwear products in interstate commerce does not constitute

unfair competition.

t

60. Plaintiffs seek declaratory judgment that Defendant has suffered no, and will not

suffer any, damages or loss of goodwill as a result of Plaintiffs' use of a vertical stripe pattern on

the interior a lining for footwear products.

61. Plaintiffs seek declaratory judgment that Defendant is not entitled to any

injunctive relief or damages under 15 U.S.C. § 1125.

PRAYER FOR RELIEF

WHEREFORE, Plaintiffs pray that the Court enter judgment in their favor, as follows:

A. declaring that Defendant's claimed trademark and/or trade dress fails to function

as an indicator of source because it is merely ornamental and/or lacks secondary meaning;

B. declaring that Defendant's claimed trademark is not protectable under the doctrine

of aesthetic functionality;

C. declaring that Plaintiffs', their licensees', and their authorized dealers' conduct,

including their promotion, advertising, sale and offer for sale of goods bearing a vertical stripe

pattern on footwear products, does not constitute trademark or trade dress infringement, false

designation oforigin or unfair competition under the Lanham Act or under New York State law;

D. declaring that Defendant is not entitled to any injunctive relief with respect to

Plaintiffs' use of a stripe pattern as a lining for footwear products;

E. declaring that Defendant has not suffered any and will not suffer any harm, and

thus is not entitled to damages or other relief under the Lanham Act or under New York State

law;

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F. declaring that Plaintiffs, their licensees and their authorized retailers are entitled

to use and sell products bearing a vertical stripe pattern on the lining for footwear products;

G. awarding Plaintiffs their costs, expenses and attorneys' fees in this action; and

H. awarding such other further relief to which Plaintiffs may be entitled as a matter

of law or equity, or which the Court deems to be just and proper.

Dated: September 11, 2013

202147273.1

Respectfully submitted,

MANATT PHELPS & PHILLIPS, L

7 Times Square

New York, New York 10036

(212) 790-4500

Attorneys for Plaintiffs

Tommy Hiljiger US.A., Inc. and

Tommy Hiljiger Licensing LLC

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EXHIBIT A

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' ' ' ' ' ' ' ' ' ' ' ' ' ' ' ' ' ' ' ' ' ' ' ' ' ' ' ' ' ' ' ' ' ' ' ' ' ' ' ' ' ' ' ' '\\\\\\\\\\\\\\\\\\\\

TOMMY :. HILFIGERINTIMATES

·resh american stINTIMATES

FALL 2006

November 7-11, 2005

11111111111111111111111111111111111111111111111111111111111111111111111111

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FRESH AMERICANIJ II 11

1 II II ll [I ll II It II II II II f.l II li II II ij I I I I I I I Il II

FRESH•AMERICAN STYLE:

What is Fresh American Style:

• Living the American dream ; the notion that anything is possible

Who does Fresh American Style appeal to:

• Those who want to aspire , inspire, and are determined to live anadventurous life

What feelings does Fresh Amer ican Style conjure up:

• Ivy League, East Coast, Updated Classic Preppy style

What symbols will be used to signify Fresh Amer ican Style:• Tommy Flag

• Red, white, blue

• Ithaca stripe

1111111111 II II IIIII 11111111111111111TOMMY H I LFIGER

I NT I MATES

l i l l l l l

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THEME - FRESH AMERICAN S TYLE

Key Influences:

• Classic Prep, American Collegiate, Sports with a twis t

Key Design Details:

• Patch wo rk Madras used in unexpected ways. IthacaStr ipe used as a print detail . "Boyfriend Look," men'swear influence

Key Color Details:

• Return to Heritage Colors. Saturated colors with

bright influences

Key Fabrications :

• Pinpoints, Ithaca Stripes, Madra's, Patchwork

I 111111111111111 l l l l l l l l l l f l l l f l lTOMMY H I LFIGER

INTIMATES

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THEME: Fresh American Style

CONCEPT DESIGN: The Boyfriend Look

WOVEN BOXER:

• Oxford Cloth with TH Crest Embroidery

• Class ic Tommy in look and styling

STYLE#:

DESCRIPTION :

6/25 BASIC COLORS :

6/25 FASHION COLORS:

8/25 FASHION COLORS

SIZES:

SRP:

COST:

7447908

Boxer Short

Blue Oxford ,Pink/White Ithaca

Pink Gordon Plaid ,Blue Gordon Plaid

Pink Courtyard Stripe,Blue Courtyard Stripe,Ithaca Frog, White THI Multi Dot

S,M,L,XL

$19 .50

$ 9.36

lfiiiiiiiiiiiiiiiiJIIIIIIIIIIIIIIIIIJIIIIII

TOMMY HILF IGER

INTlMATES

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Case 1:13-cv-06386-NRB Document 1-3 Filed 09/11/13 Page 2 of 2

3!) )

'"'1)

VI

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Case 1:13-cv-06386-NRB Document 1-4 Filed 09/11/13 Page 1 of 2

EXHIBITB

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Case 1:13-cv-06386-NRB Document 1-4 Filed 09/11/13 Page 2 of 2

;c: m

n)VI

:r -o u>

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-o

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Case 1:13-cv-06386-NRB Document 1-5 Filed 09/11/13 Page 1 of 18

EXHIBIT C

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Case 1:13-cv-06386-NRB Document 1-5 Filed 09/11/13 Page 2 of 18

Trademark/Service Mark Application, Principal Register

T us

Serial Number: 85602452

Filing Date: 04/19/2012

n

NOTE: Data fields with the'" are mandatory under TEAS Plus. The wording "(ifapplicable)" appears

where the field is only mandatory under the facts of he particular application.

The table below presents the data as entered.

MARK INFORMATION

''SPECIAL FORM

USPTO-GENERATED IMAGE

kCOLORMARK

*COLOR(S) CLAIMED

(I f applicable)

• *DESCRIPTION OF THE MARK

(and Color Location, if applicable)

, PIXEL COUNT ACCEPTABLE

PIXEL COUNT

REGISTER

, INTERNAL ADDRESS

*STREET

"'CITY

"COUNTRY

\\TICRS\EXPORTll \IMAGEOUT

11 \856\024\85602452\xmll \ FTK0002.JPG

YES

NO

NO

The mark consists of thin striped design

inside of a shoe.

YES

944 X 944

• Principal

Jumbo Bright Trading Limited

161-167 Des Voeux Road

Hong Kong Trade Center, 7 f

Central

Hong Kong

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Case 1:13-cv-06386-NRB Document 1-5 Filed 09/11/13 Page 3 of 18

PHONE

LEGAL ENTITY INFORMATION

: 404-228-7439

' 404-963-6231

, CORPORATION

:GOODS AND/OR SERVICES AND BASIS INFORMATION

''INTERNATIONAL CLASS

*IDENTIFICATION

''FILING BASIS

FIRST USE ANYWHERE DATE

FIRST USE IN COMMERCE DATE

SPECIMEN

FILE NAME(S)

SPECIMEN DESCRIPTION

ADDITIONAL STATEMENTS SECTION

*TRANSLATION

(i f applicable)

"'TRANSLITERATION

! ( if applicable)

1'CLAJMED PRIOR REGISTRATION

(i f applicable)

''CONSENT (NAME/LIKENESS)

(i f applicable)

'CONCURRENT USE CLAIM

(if applicable)

ATTORNEY INFORMATION

NAME

FIRM NAME

INTERNAL ADDRESS

STREET

CITY

025

; Shoes

SECTION l(a)

At least as early as 07/08/2010

At least as early as 07/08/2010

\\TlCRS\EXPORT I I\IMAGEOUT

. Snapshots of mark design as used in

; commerce

Andrea E. Bates

i Bates & Bates, LLC

·Unit 101

. 964 Dekalb A venue

Atlanta

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Case 1:13-cv-06386-NRB Document 1-5 Filed 09/11/13 Page 4 of 18

STATE

COUNTRY

ZIP/POSTAL CODE

PHONE

FAX

EMAIL ADDRESS

• Georgia

• United States

30307

404-228-7439

404-963-6231

[email protected]

AUTHORIZED TO COMMUNICATE VIA EMAIL ; Yes

OTHER APPOINTED ATTORNEY

CORRESPONDENCE INFORMATION

*NAME

FIRM NAME

INTERNAL ADDRESS

• ''CITY

*STATE

(Required for U.S. applicants)

'COUNTRY

''ZIP/POSTAL CODE

.PHONE

Kathryn E. Cox Jason Cox

Andrea E. Bates

Bates & Bates, LLC

964 Dekalb A venue

• Atlanta

Georgia

United States

30307

. 404-228-7439

• 404-963-6231

. [email protected]· · · · · · · · ~ · · ~ · · · · ~ ~ · ~ ~ · ~ ~ · · · · · ~ · · · · · · · · · · ~ ~ ~ ~ · · · ·

1' AUTHORIZED TO COMMUNICATE VIA

EMAIL

.FEE INFORMATION

NUMBER OF CLASSES

FEE PER CLASS

'TOTAL FEE PAID

. SIGNATURE INFORMATION

SIGNATURE

., SIGNATORY'S NAME

' SIGNA TORY'S POSITION

SIGNATORY'S PHONE NUMBER

Yes

i 1

i 275

275

. IAndrea E. Bates/

Andrea E. Bates

Attorney ofRecord!GA

. 404-228-7439

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i DATE SIGNED

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Case 1:13-cv-06386-NRB Document 1-5 Filed 09/11/13 Page 6 of 18

Trademark/Service Mark Application, Principal Register

TEAS Plus Application

Serial Number: 85602452

Filing Date: 04/19/2012

To the Commissioner for Trademarks:

MARK: (Stylized and/or Design, see mark)

The mark consists of thin striped design inside of a shoe.

The applicant, Jumbo Bright Trading Limited, a corporation of Hong Kong, having an address of

161-16 7 Des Voeux Road,

Hong Kong Trade Center, 7 fCentral

Hong Kong

requests registration of the trademark/service mark identified above in the United States Patent and

Trademark Office on the Principal Register established by the Act of July 5, 1946 (15 U.S.C. Section 1051

et seq.), as amended, for the following:

For specific filing basis information for each item, you must view the display within the Input Table.

International Class 025: Shoes

In International Class 025, the mark was first used by the applicant or the applicant's related company or

licensee predecessor in interest at least as early as 07/08/2010, and first used in commerce at least as early

as 07/08/2010, and is now in use in such commerce. The applicant is submitting one( or more) specimen(s)

showing the mark as used in commerce on or in connection with any item in the class of listed goods

and/or services, consisting of a(n) Snapshots of mark design as used in commerce.

Specimen Filc1

Specimen File2

The applicant's current Attorney Information:

Andrea E. Bates and Kathryn E. Cox Jason Cox of Bates & Bates, LLC

Unit 101

964 Dekalb A venue

Atlanta, Georgia 30307

United States

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Case 1:13-cv-06386-NRB Document 1-5 Filed 09/11/13 Page 7 of 18

The applicant's current Correspondence Information:

Andrea E. Bates

Bates & Bates, LLC

Unit 101

964 Dekalb A venueAtlanta, Georgia 30307

404-228-7439(phone)

404-963-6231 (fax)

[email protected] (authorized)

A fee payment in the amount of $275 has been submitted with the application, representing payment for 1

class(es).

Declaration

The undersigned, being hereby warned that willful false statements and the like so made are punishable byfine or imprisonment, or both, under 18 U.S.C. Section 1001, and that such willful false statements, and

the like, may jeopardize the validity of the application or any resulting registration, declares that he/she is

properly authorized to execute this application on behalf of the applicant; he/she believes the applicant to

be the owner of the trademark/service mark sought to be registered, or, if the application is being filed

under 15 U.S.C. Section 1051(b), he/she believes applicant to be entitled to use such mark in commerce;

to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right

to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to

be likely, when used on or in connection with the goods/services of such other person, to cause confusion,

or to cause mistake, or to deceive; and that all statements made of his/her own knowledge are true; and

that all statements made on information and belief are believed to be true.

Signature: IAndrea E. Bates/ Date Signed: 04119/2012

Signatory's Name: Andrea E. Bates

Signatory's Position: Attorney ofRecord/GA

RAM Sale Number: 13617

RAM Accounting Date: 04/19/2012

Serial Number: 85602452

Internet Transmission Date: Thu Apr 19 13:27:46 EDT 2012TEAS Stamp: USPTO/FTK-173.102.193.213-20120419132746

344374-85602452-49038d4d2cddlf57da572452

51 bc4630da-CC-13617-20120419120332551780

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Case 1:13-cv-06386-NRB Document 1-5 Filed 09/11/13 Page 11 of 18

Trademark/Service Mark Application, Principal Register

TEAS Plus Application

Serial Number: 85602476

Filing Date: 04/19/2012

NOTE: Data fields with the "k are mandatory under TEAS Plus. The wording "(ifapplicable)" appears

where the field is only mandatory under the facts of he particular application.

The table below presents the data as entered.

MARK INFORMATION

·kMARK

*SPECIAL FORM

USPTO-GENERATED IMAGE

'''COLOR MARK

'"COLOR(S) CLAIMED

(If applicable)

; ''DESCRIPTION OF THE MARK

(and Color Location, if applicable)

PIXEL COUNT ACCEPTABLE

: PIXEL COUNT

REGISTER

•APPLICANT INFORMATION

*OWNER OF MARK

INTERNAL ADDRESS

;*STREET

*CITY

*COUNTRY

YES

NO

NO

The mark consists of thin striped design

· inside of a shoe.

: Jumbo Bright Trading Limited

. Hong Kong Trade Center, 7/F

. 161-167 Des Voeux Road

'Central

Hong Kong

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Case 1:13-cv-06386-NRB Document 1-5 Filed 09/11/13 Page 12 of 18

PHONE

FAX

EMAIL ADDRESS

LEGAL ENTITY INFORMATION

*STATE/COUNTRY OF INCORPORATION

404-228-7439

i404-963-6231

: [email protected]

. Hong Kong

, GOODS AND/OR SERVICES AND BASIS INFORMATION

*INTERNATIONAL CLASS

*IDENTIFICATION

*FILING BASIS

FIRST USE ANYWHERE DATE

FIRST {)SE IN COMMERCE DATE

SPECIMEN

FILE NAME(S)

SPECIMEN DESCRIPTION

, ADDITIONAL STATEMENTS SECTION

''TRANSLATION

, (i f applicable)

: ''TRANSLITERATION(i f applicable)

"CLAIMED PRIOR REGISTRATION

(i f applicable)

"'CONSENT (NAME/LIKENESS)

(i f applicable)

'1·CONCURRENT USE CLAIM

(if applicable)

ATTORNEY INFORMATION

NAME

FIRM NAME

. INTERNAL ADDRESS

At least as early as 07/08/2010

At least as early as 07/08/2010

. Snapshot of mark design as used in

commerce

Andrea E. Bates

Bates & Bates, LLC

Unit 101' ....... , , ~ ~ · · · · · · " ' ' ' ' ' ' ' ~ ' ' ' ' ' ' ·+·· . . . ~ ~ · ' ' .

'STREET . 964 Dekalb A venue

'CITY , Atlanta

'STATE , Georgia

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Case 1:13-cv-06386-NRB Document 1-5 Filed 09/11/13 Page 13 of 18

COUNTRY

ZIP/POSTAL CODE

EMAIL ADDRESS

United States

30307

404-228-7439

404-963-6231

[email protected]

AUTHORIZED TO COMMUNICATE VIA EMAIL Yes

OTHER APPOINTED ATTORNEY

CORRESPONDENCE INFORMATION

*NAME

FIRM NAME

INTERNAL ADDRESS

'*CITY

*STATE

(Required for U.S. applicants)

PHONE

FAX

'''EMAIL ADDRESS

*AUTHORIZED TO COMMUNICATE VIA

EMAIL

FEE INFORMATION

, NUMBER OF CLASSES

· FEE PER CLASS

. ''TOTAL FEE PAID

SIGNATURE INFORMATION

k SIGNATURE

SIGNATORY'S NAME

SIGNATORY'S POSITION

SIGNATORY'S PHONE NUMBER

DATE SIGNED

Kathryn E. Cox Jason Cox

Bates & Bates, LLC

. Unit 101

964 Dekalb A venue

; Georgia

United States

30307

404-228-7439

404-963-6231

. [email protected]

. Yes

IAndrea E. Bates/

. Andrea E. Bates

· Attorney of Record/GA

: 404-228-7439

04/19/2012

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Case 1:13-cv-06386-NRB Document 1-5 Filed 09/11/13 Page 15 of 18

Trademark/Service Mark Application, Principal Register

TEAS Plus Application

Serial Number: 85602476

Filing Date: 04/19/2012

To the Commissioner for Trademarks:

MARK: (Stylized and/or Design, see mark)

The mark consists of thin striped design inside of a shoe.

The applicant, Jumbo Bright Trading Limited, a corporation ofHong Kong, having an address of

Hong Kong Trade Center, 7/F,

161-167 Des Voeux RoadCentral

Hong Kong

requests registration of the trademark/service mark identified above in the United States Patent and

Trademark Office on the Principal Register established by the Act of July 5, 1946 (15 U.S. C. Section 1051

et seq.), as amended, for the following:

For specific filing basis information for each item, you must view the display within the Input Table.

International Class 025: Shoes

In International Class 025, the mark was first used by the applicant or the applicant's related company or

licensee predecessor in interest at least as early as 07/08/2010, and first used in commerce at least as early

as 07/08/2010, and is now in use in such commerce. The applicant is submitting one(or more) specimen(s)

showing the mark as used in commerce on or in connection with any item in the class of listed goods

and/or services, consisting of a(n) Snapshot ofmark design as used in commerce.

Specimen File 1

The applicant's current Attorney Information:

Andrea E. Bates and Kathryn E. Cox Jason Cox of Bates & Bates, LLC

Unit 101

964 Dekalb A venue

Atlanta, Georgia 30307

United States

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Case 1:13-cv-06386-NRB Document 1-5 Filed 09/11/13 Page 16 of 18

The applicant's current Correspondence Infonnation:

Andrea E. Bates

Bates & Bates, LLC

Unit 101

964 Dekalb A venue

Atlanta, Georgia 30307404-228-7439(phone)

404-963-6231(fax)

[email protected] (authorized)

A fee payment in the amount of$275 has been submitted with the application, representing payment for 1

class(es).

Declaration

The undersigned, being hereby warned that willful false statements and the like so made are punishable by

fine or imprisonment, or both, under 18 U.S.C. Section 1001, and that such willful false statements, andthe like, may jeopardize the validity of the application or any resulting registration, declares that he/she is

properly authorized to execute this application on behalf of the applicant; he/she believes the applicant to

be the owner of the trademark/service mark sought to be registered, or, if the application is being filed

under 15 U.S.C. Section 1051(b), he/she believes applicant to be entitled to use such mark in commerce;

to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right

to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to

be likely, when used on or in connection with the goods/services of such other person, to cause confusion,

or to cause mistake, or to deceive; and that all statements made of his/her own knowledge are true; and

that all statements made on information and belief are believed to be true.

Signature: /Andrea E. Bates/ Date Signed: 04119/2012

Signatory's Name: Andrea E. Bates

Signatory's Position: Attorney of Record/GA

RAM Sale Number: 13840

RAM Accounting Date: 04/19/2012

Serial Number: 85602476

Internet Transmission Date: Tlm Apr 19 13:42:13 EDT 2012

TEAS Stamp: USPTO/FTK-173.1 02.193.213-20120419134213696390-85602476-490aa6efa6197a05db935787

52bd9d8480-CC-13840-20120419133259671396

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Case 1:13-cv-06386-NRB Document 1-6 Filed 09/11/13 Page 1 of 12

EXHIBITD

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Case 1:13-cv-06386-NRB Document 1-6 Filed 09/11/13 Page 2 of 12

To:

Subject:

Sent:

Jumbo Bright Trading Limited ([email protected])

U.S. TRADEMARK APPLICATION NO. 85602452- N/A

8/13/2012 11:43:50 AM

Sent As: [email protected]

Attachments: Attachment- 1

Attachment - 2

Attachment - 3

Attachment - 4

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT'S TRADEMARK APPLICATION

APPLICATION SERIAL NO.

MARK:

CORRESPONDENT ADDRESS:

ANDREA E. BATES

BATES & BATES, LLC

964DEKALBAVENEAPT 101

ATLANTA, GA 30307-5606

85602452

APPLICANT: Jumbo Bright Trading Limited

CORRESPONDENT'S REFERENCE/DOCKET NO :NIACORRESPONDENT E-MAIL ADDRESS:

[email protected]

OFFICE ACTION

*85602452*

CLICK HERE TO RESPONDhl.tp:i/www.uspto.gov/t.rademarks/t<

STRICT DEADLINE TO RESPOND TO THIS LETTER

TO AVOID ABANDONMENT OF APPLICANT'S TRADEMARK APPLICA TlON, THE USPTO MUST

RECEIVE APPLICANT'S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE

ISSUE/MAILING DATE BELOW.

ISSUE/MAILING DATE: 8/l3/20L2

The referenced application has been reviewed by the assigned trademark examining attorney. Applicant

must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a),

2.65(a); TMEP §§711, 718.03.

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Case 1:13-cv-06386-NRB Document 1-6 Filed 09/11/13 Page 3 of 12

The trademark examining attorney has searched the Office's database of registered and pending marks

and has found no conflicting marks that would bar registration under Trademark Act Section 2(d). TMEP

§704.02; see 15 U.S.C. §1052(d).

Ornamental Refusal- Repetitive Design

Registration is refused because the applied-for mark, consisting of a repeated design or pattern used on

some or all of the inner surfaces of a product or product packaging, is not inherently distinctive.

Trademark Act Sections 1, 2, and 45, 15 U.S.C. §§1051-1052, 1127; see TMEP §904.07(b). Similar to

color marks, which consist of one or more colors used on some or all of the surfaces of a product or

product packaging, such use of a pattern or repeated design does not "immediately . . . signal a brand or a

product 'source."' Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 163, 34 USPQ2d 1161, 1162

(1995).

Accordingly, such marks are registrable only on the Supplemental Register or on the Principal Register

with sufficient proof of acquired distinctiveness. Cf Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S.

205, 211-12, 54 USPQ2d 1065, 1068 (2000); Qualitex, 514 U.S. at 163, 34 USPQ2d at 1163; In reOwens-Corning Fiberglas Corp., 774 F.2d 1116, 1120-21,227 USPQ 417,419 (Fed. Cir. 1985).

Ornamental Refusal - Capable

Registration is refused because the applied-for mark, as used on the specimen of record, is merely a

decorative or ornamental feature of the goods; it does not function as a trademark to identify and

distinguish applicant's goods from those of others and to indicate the source of applicant's goods.

Trademark Act Sections 1, 2 and 45, 15 U.S.C. §§1051-1052, 1127; see In re Villeroy & Bach S.A.R.L., 5

USPQ2d 1451 (TTAB 1987) (holding floral pattern design of morning glories and leaves for tableware

nondistinctive and merely a decorative pattern with no trademark significance); TMEP §§904.07(b),

1202.03 et seq.; cf In re Owens-Corning Fiberglas Corp., 774 F.2d 1116,227 USPQ 417 (Fed. Cir.

1985).

Established practices of the trade may be relevant to the amount of evidence needed to show acquired

distinctiveness with respect to a mark that is merely ornamental or decorative. TMEP §1202.03(b).

Generally, more evidence is needed if the applied-for mark is used so frequently as ornamentation or

decoration in the relevant industry that consumers would be less apt to discern source-indicating

significance based on its use. See Anchor Hocking Glass Corp. v. Corning Glass Works, 162 USPQ 288,

292 (TTAB 1969) (holding ornamental cornflower design registrable as used on coffee percolators and

culinary vessels and utensils based on applicant's "voluminous evidence" of purchaser recognition of the

design as an indicia of origin, despite practices of the trade to use ornamental floral designs on such

goods); cf In re Villeroy & Boch S.A.R.L., 5 USPQ2d 1451 (TTAB 1987) (holding design ofvines with

morning glories used on tableware to be mere ornamentation where applicant concedes that "it is commonpractice to decorate tableware with floral patterns;" thus the three declarations, advertising and

promotional evidence, and sales and advertising figures were found insufficient to show trademark

significance because such evidence did not refer to or promote the design as a trademark and the

advertising and promotional figures failed to distinguish between applicant's various floral patterns).

The applied-for mark, as shown on the specimen, is merely ornamental because it comprises a basic

repetitive stripe design applied to a large portion of the footwear. This manner of use is for decorative

purposes and would be perceived as such. The inside and outside of a shoe is a popular place to add an

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Case 1:13-cv-06386-NRB Document 1-6 Filed 09/11/13 Page 4 of 12

ornamental design, as shown by the attached excerpts from several clothing and footwear websites

attached as a representative sample of practices of the trade.

Applicant may respond to the stated ornamental refusal by satisfying one of the following, as appropriate:

(1) Claiming acquired distinctiveness under Trademark Act Section 2(f) by submitting

evidence that the applied-for mark has become distinctive of applicant's goods in commerce.Trademark Act Section 2(f), 15 U.S.C. § 1052(f). Evidence may consist of examples of advertising

and promotional materials that specifically promote, as a trademark, the mark for which

registration is sought; dollar figures for advertising devoted to such promotion; dealer and

consumer statements of recognition of the applied-for mark as a trademark; and any other evidence

that establishes recognition of the applied-for mark as a trademark for the goods. See 37 C.P.R.

§2.41(a); TMEP §§1202.03(d), 1212.06 et seq.;

(2) Submitting evidence that the applied-for mark is an indicator of secondary source or

sponsorship for the identified goods. Univ. Book Store v. Univ. ofWis. Bd. ofRegents, 33

USPQ2d 1385, 1405 (TTAB 1994); In re Olin Corp., 181 USPQ 182, 182 (TTAB 1973). That is,

applicant may submit evidence showing that the applied-for mark would be recognized as a

trademark through applicant's use of the mark with goods and/or services other than those being

refused as ornamental. In re The Original Red Plate Co., 223 USPQ 836, 837 (TTAB 1984).

Applicant must establish that, as a result of this use in connection with other goods and/or services,

the public would recognize applicant as the secondary source of, or sponsor for, the identified

goods. See TMEP §1202.03(c).;

(3) Amending the application to seek registration on the Supplemental Register.

Trademark Act Section 23, 15 U.S.C. §1091; see 37 C.P.R. §§2.47, 2.75(a); TMEP §§801.02(b),

816.; or

(4) Submitting a substitute specimen that shows non-ornamental trademark use, and the

following statement, verified with an affidavit or signed declaration under 37 C.P.R. §2.20: "Thesubstitute specimen was in use in commerce at least as early as the filing date of the

applicat ion." 37 C.P.R. §2.59(a); TMEP §904.05; see 37 C.P.R. §2.193(e)(1). If submitting a

substitute specimen requires amendment to the dates of use, applicant must also verify the

amended dates. 37 C.P.R. §2.71(c); TMEP §904.05.

I f applicant cannot satisfy one of the above, applicant may amend the application from a use in commerce

basis under Trademark Act Section 1 a) to an intent to use basis under Section 1 b), and the refusal will be

withdrawn. See TMEP §806.03(c). However, if applicant amends the basis to Section 1(b), registration

will not be granted until applicant later amends the application back to use in commerce by filing an

acceptable allegation ofuse with a proper specimen. See 15 U.S.C. §1051(c), (d); 37 C.P.R. §§2.76, 2.88;

TMEP § 1103. If the same specimen is submitted with an allegation of use, the same refusal will issue.

To amend to Section 1 b), applicant must submit the following statement, verified with an affidavit or

signed declaration under 37 C.P.R. §2.20: "Applicant has had a bona fide intention to use the mark in

commerce on or in connection with the goods or services listed in the application as of the filing date of

the application." 37 C.P.R. §2.34(a)(2); TMEP §806.01(b); see 15 U.S.C. §1051(b); 37 C.P.R.

§§2.35(b)(1 ), 2.193(e )(1 ).

Configuration Mark- Accurate Description Required

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For marks consisting of a configuration of the goods or their packaging or a specific design feature of the

goods or packaging, the drawing must depict a single three-dimensional view of the goods or packaging,

showing in solid lines those features that applicant claims as its mark. See 37 C.P.R. §2.52(b)(2); TMEP

§§807.1 0, 1202.02(c)(iv); In re Minn. Mining & Mfg. Co., 335 F.2d 836, 839, 142 USPQ 366, 368-69

(C. C.P.A. 1964). If the mark cannot be adequately depicted in a single rendition, applicant must file a

petition to the Director requesting that the requirement to provide a single rendition of the mark bewaived. TMEP §807.10.

If the drawing of the mark includes additional matter not claimed as part of the mark (e.g., matter that

shows the position or placement of the mark), applicant must depict such matter using broken or dotted

lines. 37 C.P.R. §2.52(b)(4); In re Famous Foods, Inc., 217 USPQ 177, 177 (TTAB 1983); TMEP

§§807.08, 1202.02(c)(i); see In re Water Gremlin Co., 208 USPQ 89,91 (C.C.P.A. 1980).

In addition to these drawing requirements, applicant must also submit a clear and concise description of

the mark that does the following:

(1) Indicates that the mark is a three-dimensional configuration of the goods or their packaging orof a specific design feature of the goods or packaging;

(2) Specifies all the elements in the drawing that constitute the mark and are claimed as part of the

mark; and

(3) Specifies any elements which are not par t of the mark and indicates that the matter shown in

broken or dotted lines is not part of the mark and serves only to show the position or placement of

the mark.

See 37 C.P.R. §§2.37, 2.52(b)(2), (b)(4); In re Famous Foods, Inc., 217 USPQ 177, 178 (TTAB 1983);

TMEP §§807.08, 807.10, 1202.02(c)(ii).

The following description would be acceptable: "The mark consists of a vertical stripe pattern throughout

the entire inside lining of the shoe. The vertical stripe pattern is not on the insole. The mark also consists

of a three vertical stripe design on the shoe rim near the heel area. The broken or dotted lines are not part

of the mark and serve only to show the position or placement of the mark."

Mark Differs on Drawing and Specimen

The mark on the specimen disagrees with the mark on the drawing. In this case, the specimen displays the

mark with a five vertical stripe design on the shoe rim near the heel area; and the drawing shows the mark

with a three vertical stripe design on the shoe rim near the heel area. The difference is with the number of

stripes on the design on the shoe rim near the heel area.

An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for

mark in use in commerce for each class of goods and/or services. Trademark Act Sections 1 and 45, 15

U.S.C. §§1051, 1127; 37 C.P.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a). The mark on the

drawing must be a substantially exact representation of the mark on the specimen. 37 C.P.R. §2.51(a);

TMEP §807.12(a); see 37 C.P.R. §2.72(a)(l ). In addition, the drawing ofthe mark can be amended only if

the amendment does not materially alter the mark as originally filed. 37 C.P.R. §2.72(a)(2); see TMEP

§§807.12(a), 807.14 et seq.

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Case 1:13-cv-06386-NRB Document 1-6 Filed 09/11/13 Page 6 of 12

Therefore, applicant must submit one of the following:

(I) A new drawing of the mark that agrees with the mark on the specimen but does not materially

alter the original mark. See 37 C.P.R. §2.72(a)(2); TMEP §§807.12(a), 807.14 et seq. Amending

the drawing to agree with the specimen would not be considered a material alteration of the mark

in this case.

(2) A substitute specimen showing use in commerce of the mark on the drawing, and the

following statement, verified with an affidavit or signed declaration under 37 C.P.R. §2.20: "The

substitute specimen was in use in commerce at least as early as the filing date of the

application." See 37 C.P.R. §§2.59(a), 2.193(e)(1); TMEP §§807.12(a), 904.05. If submitting a

specimen requires an amendment to the dates of use, applicant must also verify the amended

dates. 37 C.P.R. §2.71(c); TMEP §904.05.

Pending receipt of a proper response, registration is refused because the specimen does not show the

applied-for mark in use in commerce as a trademark and/or service mark. Trademark Act Sections 1 and

45, 15 U.S.C. §§1051, 1127; 37 C.P.R. §§2.34(a)(l)(iv), 2.56(a); TMEP §§904, 904.07(a).

TEAS PLUS APPLICANTS MUST SUBMIT DOCUMENTS ELECTRON!CALLY OR SUBMIT

FEE: Applicants who filed their application online using the reduced-fee TEAS Plus application must

continue to submit certain documents online using TEAS, including responses to Office actions. See 37

C.P.R. §2.23(a)(l) . For a complete list of these documents, see TMEP §819.02(b). In addition, such

applicants must accept correspondence from the Office via e-mail throughout the examination process and

must maintain a valid e-mail address. 37 C.P.R. §2.23(a)(2); TMEP §§819, 819.02(a). TEAS Plus

applicants who do not meet these requirements must submit an additional fee of $50 per international class

of goods and/or services. 37 C.P.R. §2.6(a)(l)(iv); TMEP §819.04. In appropriate situations and where

all issues can be resolved by amendment, responding by telephone to authorize an examiner's amendment

will not incur this additional fee.

/Tejbir Singh/

Trademark Attorney

Law Office I 06

571-272-5878

571-273-9106 (fax)

[email protected] (informal inquiries only)

TO RESPOND TO THIS LETTER: Go to http://www.uspto.gov/trademarks/teas/response fonns.jsp. Please

wait 48-72 hours from the issue/mailing date before using TEAS, to allow for necessary system updates of

the application. For technical assistance with online forms, e-mail T E A S ( { ~ u s p t o . g o v . For questions

about the Office action itself, please contact the assigned trademark examining attorney. E-mail

communications will not be accepted as responses to Office actions; therefore, do not respond to this

Office action by e-mail.

All informal e-mail communications relevant to this application will be placed in the official

application record.

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Case 1:13-cv-06386-NRB Document 1-6 Filed 09/11/13 Page 7 of 12

WHO MUST SIGN THE RESPONSE: It must be personally signed by an individual applicant

or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint

applicants). If an applicant is represented by an attorney, the attorney must sign the response.

PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant does

not miss crucial deadlines or official notices, check the status of the application every three to four monthsusing Trademark Applications and Registrations Retrieval (TARR) at http://tarr.uspto.gov/. Please keep a

copy of the complete T ARR screen. If T ARR shows no change for more than six months, call 1-800-786-

9199. For more information on checking status, see http://www.uspto.gov/trademarks/process/status/.

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at

http://www.uspto.gov/teas/eTEASpageE.htm.

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Case 1:13-cv-06386-NRB Document 1-6 Filed 09/11/13 Page 8 of 12

Website fo1_this i m _ ~Stripe Design flip flop shoes for woman

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Case 1:13-cv-06386-NRB Document 1-6 Filed 09/11/13 Page 9 of 12

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Case 1:13-cv-06386-NRB Document 1-6 Filed 09/11/13 Page 10 of 12

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Case 1:13-cv-06386-NRB Document 1-6 Filed 09/11/13 Page 11 of 12

Home • Vox Shovelhead- Men's

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Case 1:13-cv-06386-NRB Document 1-6 Filed 09/11/13 Page 12 of 12

To:

Subject:

Sent:

Sent As:

Attachments:

Jumbo Bright Trading Limited ( a b a t c s ( ~ b a t e s - b a t e s . c o m )U.S. TRADEMARK APPLICATION NO. 85602452 - NlA8/13/2012 11:43:50 AM

[email protected]

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

USPTO OFFICE ACTION HAS ISSUED ON 8/13/2012 FORSERIAL NO. 85602452

Please follow the instructions below to continue the prosecution of your application:

TO READ OFFICE ACTION: Click on this link or go to

http://portal.uspto.gov/external/portal/tow and enter the application serial number to ~ the

Office action.

PLEASE NOTE: The Office action may not be immediately available but will be viewable within 24

hours of this e-mail notification.

RESPONSE IS REQUIRED: You should carefully review the Office action to determine (1) how to

respond; and (2) the applicable response time period. Your response deadline will be calculated from

3/lOU (or sooner if specified in the office action).

Do NOT hit "Reply" to this e-mail notification, or otherwise attempt to e-mail your response, as the

USPTO does NOT accept e-mailed responses. Instead, the USPTO recommends that you respond

online using the Trademark Electronic Application System Response Form.

HELP: For technical assistance in accessing the Office action, please e-mail

[email protected]. Please contact the assigned examining attorney with questions about the Officeaction.

WARNING

Failure to file the required response by the applicable deadline will result in the

ABANDONMENT of your application.

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Case 1:13-cv-06386-NRB Document 1-7 Filed 09/11/13 Page 1 of 8

EXHIBITE

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Case 1:13-cv-06386-NRB Document 1-7 Filed 09/11/13 Page 2 of 8

To:

Subject:

Sent:

Jumbo Bright Trading Limited ([email protected])

U.S. TRADEMARK APPLICATION NO. 85602452- NIA2115/2013 12:49:32 PM

Sent As: [email protected]

Attachments:

UNITED STATES PATENT AND TRADEMARK OFFIC E (USPTO)OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT'S TRADEMARK APPLICATION

U.S. APPLICATION SERIAL NO. 85602452

MARK:

CORRESPONDENT ADDRESS:ANDREA E. BATES

BATES & BATES, LLC

964 DEKALB AVE NE APT 101

ATLANTA, GA 30307-5606

APPLICANT: Jumbo Bright Trading Limited

CORRESPONDENT'S REFERENCE/DOCKET NO :

NIACORRESPONDENT E-MAIL ADDRESS:

[email protected]

OFFICE ACTION

*85602452*

CLICK HERE TO RESPOND TO

http://www.uspto.gov/tradcmarks/tcas/n

STRICT DEADLINE TO RESPOND TO THIS LETTER

TO A VOID ABANDONMENT OF APPLICANT'S TRADEMARK APPLICATION, THE USPTO

MUST RECEIVE APPLICANT'S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS

OF THE ISSUE/MAILING DATE BELOW.

ISSUE/MAILING DATE:

This Office Action is in response to applicant's correspondence dated 12/28/12.

The following refusal and requirement is now withdrawn: 1) Configuration Mark- Accurate Description,

and 2) Ornamental Refusal- Repetitive Design. This refusal is withdrawn because applicant's complete

mark does not consist of a repetitive design.

TMEP §714.04.

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Case 1:13-cv-06386-NRB Document 1-7 Filed 09/11/13 Page 3 of 8

Applicant should note the following refusal and requirements:

New Requirement- Drawing

The drawing page shows two versions of the same mark that make the same commercial impression. The

application must be limited to one mark. 37 C.F.R. §2.52; TMEP §807.01. Therefore, applicant must

delete one version of the mark from the drawing page.

New Refusal- Claim of Acquired Distinctiveness Not Accepted

Applicant's claim of acquired distinctiveness is not acceptable. The burden of proving that a mark has

acquired distinctiveness is on the applicant. Yamaha Int' l Corp. v. Yoshino Gakki Co. , 840 F.2d 1572, 6

USPQ2d 1001, 1004 (Fed. Cir. 1988); In re Meyer & Wenthe, Inc., 267 F.2d 945, 122 USPQ 372

(C.C.P.A. 1959); TMEP §1212.01. An applicant must establish that the purchasing public has come to

view the proposed mark as an indicator of origin.

In determining whether the proposed mark has acquired distinctiveness, the following factors are generally

considered: (1) length and exclusivity of use of the mark in the United States by applicant; (2) the type,

expense and amount of advertising ofthe mark in the United States; and (3) applicant's efforts in the

United States to associate the mark with the source of the goods and/or services, such as unsolicited media

coverage and consumer studies. See In re Steelbuilding.com, 415 F.3d 1293, 1300, 75 USPQ2d 1420,

1424 (Fed. Cir. 2005). A showing of acquired distinctiveness need not consider all of these factors, and

no single factor is determinative. In re Steelbuilding.com, 415 F.3d at 1300, 75 USPQ2d at 1424; see

TMEP §§1212 et seq.

In the present case, applicant has not been using its mark for a significant period of time. Based on

applicant's dates ofuse, its first use was on 7/8/2010. Thus, applicant has not shown that its mark has

become distinctive of the goods by reason of substantially exclusive and continuous use in commerce for

the five years before the date when the claim of distinctiveness is made. See 37 C.F.R. §2.41(b); TMEP

§§ 1212.05-1212.05(d).

While affidavits and declarations that assert recognition of the mark as a source indicator are relevant in

establishing acquired distinctiveness, the value of the affidavits or declarations depends on the statements

made and the identity of the affiant or declarant. See In re Chern. Dynamics Inc., 839 F.2d 1569, 1571,5

USPQ2d 1828, 1830 (Fed. Cir. 1988) (finding conclusionary declaration from applicant' s vice-president

insufficient without the factual basis for the declarant's belief that the design had become distinctive).

Proof of distinctiveness also requires more than proof of the existence of a relatively small number of

people who associate a mark with the applicant. See In re The Paint Prods. Co., 8 USPQ2d 1863, 1866

(TTAB 1988) ("Because these affidavits were sought and collected by applicant from ten customers who

have dealt with applicant for many years, the evidence is not altogether persuasive on the issue of how the

average customer for paints perceives the words 'PAINT PRODUCTS CO.' in conjunction with paints

and coatings."); see also Mag Instrument Inc. v. Brinkmann Corp., 96 USPQ2d 1701, 1723 (TTAB 201 0)

(finding sixteen declarations of little persuasive value, as they were nearly identical in wording and only

one of the declarants was described as an end consumer); In re Gray Inc., 3 USPQ2d 1558, 1560 (TTAB

1987) (finding affidavit of applicant's counsel expressing his beliefthat the mark has acquired secondary

meaning of "no probative value whatsoever" because, among other reasons, the statement is subject to

bias); In re Petersen Mfg. Co., 2 USPQ2d 2032, 2035 (TTAB 1987) (finding declarations from customers

which stated that designs used by applicant indicate to the declarant that the applicant is the source of the

goods, but which did not refer to or identify the designs with any specificity, not persuasive); In re Bose

Coro., 216 USPO 1001. 1005 (TTAB 1983), aff'd, 772 F.2d 866, 227 USPO 1 (Fed. Cir. 1985) (deeming

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retailer's statement that he has been in contact with many purchasers of loudspeaker systems of whom a

substantial number would recognize the depicted design as originating with applicant competent evidence

of secondary meaning); In re Flex-0-Glass, Inc., 194 USPQ 203, 206 (TTAB 1977) ("[T]he fact that the

affidavits may be similar in format and expression is of no particular significance ... since the affiants have

sworn to the statements contained therein.").

Applicant has provided affidavits from two celebrity endorsers, a clothing company founder, a talentcompany founder, and an international publishing director. However, of these affidavits, three specifically

refer to the blue and white striped lining of the shoes. The current application is not limited to this

purported famous blue and white striped color scheme. Additionally, the three vertical stripe pattern on

the heel rim is not noted in any of the affidavits. Applicant has also not provided any affidavits from an

average or typical end user.

Applicant has provided evidence of sales figures for the goods at issue. Specifically, applicant indicates it

has "experienced over $1.2 million in sales," and that it has sold "almost 37,000 shoes." However, such

evidence is not dispositive of whether the proposed mark has acquired distinctiveness. Such extensive

sales and promotion may demonstrate the commercial success of applicant's goods and/or services, but

not that relevant consumers view the matter as a mark for such goods and/or services. SeeIn

re BostonBeer Co., 198 F.3d 1370, 53 USPQ2d 1056 (Fed. Cir. 1999);/n re Busch Entm 't Corp., 60 USPQ2d

1130, 1134 (TTAB 2000). Similarly, applicant's advertising and sales expenditures are merely indicative

of its efforts to develop distinctiveness; not evidence that the mark has acquired distinctiveness. See In re

Pennzoil Prods. Co., 20 USPQ2d 1753 (TTAB 1991).

Applicant has provided several print and web advertisements and media commentaries. However, none of

these materials point to applicant's mark, both the stripes inside the shoe and the three stripe vertical

design on the heel rim, as the distinct feature that consumers should "look for" to recognize that the

product is a Charles Philip shoe. The actual mark does not appear to be highlighted or noted in any of

these materials.

The ultimate test in determining whether a designation has acquired distinctiveness is applicant's success,rather than its efforts, in educating the public to associate the proposed mark with a single source. See In

re Chevron Intellectual Prop. Group LLC, 96 USPQ2d 2026, 2031 (TTAB 2010) (finding evidence of

acquired distinctiveness deficient in part because of the lack of advertisements promoting recognition of

pole spanner design as a service mark); Mag Instrument Inc. v. Brinkmann Corp., 96 USPQ2d 1701, 1723

(TTAB 2010) (finding absence of"look for" advertisements damaging to attempt to demonstrate acquired

distinctiveness ofproposed configuration mark); Nextel Commc'ns, Inc. v. Motorola, Inc., 91 USPQ2d

1393, 1408 (TTAB 2009) (sustaining opposition on the ground that sound mark had not acquired

distinctiveness in part because applicant failed to provide evidence corroborating that the mark was used

in advettisements in such a way that it would be recognized as a source identifier for cellular telephones);

In re E.!. Kane, Inc., 221 USPQ 1203, 1206 (TTAB 1984) (affinning refusal to register OFFICE

MOVERS, INC., for moving services, notwithstanding §2(±) claim based on, inter alia, evidenceof

substantial advertising expenditures. "There is no evidence that any of the advertising activity was

directed to creating secondary meaning in applicant 's highly descriptive trade name."); In re Kwik Lok

Corp., 217 USPQ 1245, 1247-48 (TTAB 1983) (holding evidence insufficient to establish acquired

distinctiveness for configuration of bag closures made of plastic, notwithstanding applicant's statement

that advertising of the closures involved several hundred thousands of dollars, where there was no

evidence that the advertising had any impact on purchasers in perceiving the configuration as a mark).

For the reasons set forth above, applicant's claim of acquired distinctiveness is not accepted.

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Case 1:13-cv-06386-NRB Document 1-7 Filed 09/11/13 Page 5 of 8

Ornamental Refusal- Capable

The ornamental refusal is continued.

Mark Differs on Drawing and Specimen

This requirement is continued. As indicated previously, the specimen displays the mark with a five

vertical stripe design on the shoe rim near the heel area, and the drawing shows the mark with a three

vertical stripe design on the shoe rim near the heel area.

TEAS PLUS APPLICANTS MUST SUBMIT DOCUMENTS ELECTRONICALLY OR SUBMIT

FEE: Applicants who filed their application online using the reduced-fee TEAS Plus application must

continue to submit certain documents online using TEAS, including responses to Office actions. See 3 7

C.P.R. §2.23(a)(l). For a complete list of these documents, see TMEP §819.02(b). In addition, such

applicants must accept correspondence from the Office via e-mail throughout the examination process and

must maintain a valid e-mail address. 37 C.P.R. §2.23(a)(2); TMEP §§819, 819.02(a). TEAS Plus

applicants who do not meet these requirements must submit an additional fee of $50 per international class

of goods and/or services. 37 C.P.R. §2.6(a)(l)(iv); TMEP §819.04. In appropriate situations and where

all issues can be resolved by amendment, responding by telephone to authorize an examiner's amendment

will not incur this additional fee.

/Tejbir Singh/

Trademark Attorney

Law Office 106

571-272-5878

571-273-9106 (fax)[email protected] (informal inquiries only)

TO RESPOND TO THIS LETTER: Go to http://www.uspto.gov/trademarks/tcas/response forms.jsp. Please

wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System

(TEAS), to allow for necessary system updates of the application. For technical assistance with online

forms, e-mail TEASCd1uspto.gov. For questions about the Office action itself, please contact the assigned

trademark examining attorney. E-mail communications will not be accepted as responses to Office

actions; therefore, do not respond to this Office action by e-mail.

All informal e-mail communications relevant to this application will be placed in the official

application record.

WHO MUST SIGN THE RESPONSE: It must be personally signed by an individual applicant or

someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint

applicants). If an applicant is represented by an attorney, the attorney must sign the response.

PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant does

not miss crucial deadlines or official notices, check the status of the application every three to four months

using the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.uspto.gov/. Please keep

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Case 1:13-cv-06386-NRB Document 1-7 Filed 09/11/13 Page 6 of 8

a copy of the TSDR status screen. If the status shows no change for more than six months, contact the

Trademark Assistance Center by e-mail at TrademarkA.ssistanceCenter(aJ,uspto.gov or call 1-800-786-

9199. For more information on checking status, see http://www.uspto.gov/trademarks/process/status/.

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at

http://www.uspto.gov/trademarks/teas/correspondence.jsp.

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Case 1:13-cv-06386-NRB Document 1-7 Filed 09/11/13 Page 7 of 8

To:

Subject:

Sent:

Sent As:

Jumbo Bright Trading Limited (abates(CV,batcs-batcs.com)

U.S. TRADEMARK APPLICATION NO. 85602452- N/A

2115/2013 12:49:32 PM

[email protected]

Attachments:

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 13 FOR U.S. APPLICATION SERIAL NO. 85602452

Please follow the instructions below:

(1) TO READ THE LETTER: Click on this link or go to http://tsdr.uspto.gov, enter the U.S.

application serial number, and click on "Documents."

The Office action may not be immediately viewable, to allow for necessary system updates of the

application, but will be available within 24 hours of this e-mail notification.

(2) TIMELY RESPONSE IS REQUIRED: Please carefully review the Office action to determine (1)

how to respond, and (2) the applicable response time period. Your response deadline will be calculated

from 2/t5/20I3 (or sooner i f specified in the Office action). For information regarding response time

periods, see http://www.uspto.gov/trademarks/process/status/responsetime.jsp.

Do NOT hit "Reply" to this e-mail notification, or otherwise e-mail your response because the

USPTO does NOT accept e-mails as responses to Office actions. Instead, the USPTO recommends that

you respond online using the Trademark Electronic Application System (TEAS) response fonn located at

http://www.uspto.gov/trademarks/teas/response forms.jsp.

(3) QUESTIONS: For questions about the contents of the Office action itself, please contact the

assigned trademark examining attorney. For technical assistance in accessing or viewing the Office action

in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR(ci/uspto.gov.

WARNING

Failure to file the required response by the applicable response deadline will result in the

ABANDONMENT of your application. For more information regarding abandonment, see

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Case 1:13-cv-06386-NRB Document 1-7 Filed 09/11/13 Page 8 of 8

http://www. uspto. gov trademarks/basics/abandon.jsp.

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION: Private

companies not associated with the USPTO are using information provided in trademark applications to

mail or e-mail trademark-related solicitations. These companies often use names that closely resemble the

USPTO and their solicitations may look like an official government document. Many solicitations require

that you pay "fees."

Please carefully review all correspondence you receive regarding this application to make sure that you are

responding to an official document from the USPTO rather than a private company solicitation. All

ofticial USPTO correspondence will be mailed only from the "United States Patent and Trademark

Office" in Alexandria, VA; or sent by e-mail from the domain "@uspto.gov." For more information on

how to handle private company solicitations, see

http://www.uspto.gov/trademarks/solicitation wamings.jsp.

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Case 1:13-cv-06386-NRB Document 1-8 Filed 09/11/13 Page 1 of 2

WOMEN'S FLAG COLLECTION

BELLA 10/25

S.R.P. $60.00TWI9482 IS] TWI9484

Green Suede Tan

TW20244~ T W I 9 4 8 1Dark BrownPink Suede Suede

3/25

TWI9479 ~ TW20605

Black White

) §;:] TWI9483

Orange Suede

BRITT I 1/25S.R.P. $60.00

TWI9477 Navy/OffWh ite

~ · -r::l TWI9476 Off White/Red

TWI9475 Black/Black

1

SCHULYER 10/25S.R.P. $65.00

TWI9994 Dark Brown

TWI9993

Black

w

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Case 1:13-cv-06386-NRB Document 1-8 Filed 09/11/13 Page 2 of 2

WOMEN 'S FLAG COLLECTION

PAIGE 3/25~.R.P. $60.00

TW20590 Navy

EJTW20591 White

~ TW22489 Brown

~ TW22080 Black

W8

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EXHIBIT G

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Case 1:13-cv-06386-NRB Document 1-10 Filed 09/11/13 Page 1 of 1

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EXHIBITH

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Case 1:13-cv-06386-NRB Document 1-11 Filed 09/11/13 Page 2 of 2

And rea Bates

Via UPS- Signature Required

General Counsel

Tommy Hilfiger Wholesale, Inc .200 Madison Ave .

New York , NY 10016

March25, 2013

Re: !ommy Hilfiger n f r - i ! ! g ~ J ) l e n t of Philip Shoes

Dear Counsel:

We represent Jtm1bo Bright Trading Limited ("JBTL"). JBTL is the exclusive worldwide owner and

distributor of CHARLES PHILIP brand loafers. JBTL has offered the distinctive CHARLES PHILIP

loafers in the United States since July 2010 and has since built up significant goodwill and notorietyregarding the same. In addition to the common law disti11ctive sniped designs, there are two trademark

applications (Exhibit f\) that cover the sniped design on the inside of the CHARLES PHJIJP loafers .

Additionally, there are also two design patents covering CHARLES PHILIP loafers. See Exhibit B.

Recently we have discovered that Tommy Hilfigcr Wholesale, Inc. ("Tommy Hilfiger") is using similar

marks and striped designs in connection with its Kalani loafers. Shoes bearing these confi.Jsingly similar

designs are available for sale on the Tommy Hilfiget v,rebsite as well as at many retailers such as

shoes.com, Macy's, and Piperlime. Example screenshots of these confusingly similar shoes are attached

as Exhibit C. A comparison of the Tonuny Hilfiger loafers to the Genuine CHARLES PHILIP loafers

demonstrate that Tommy Hilfiger infringes JBTL's intellectual property, specifically the distinctive

stripes on the insideof

he genuine CHARLES PHlLIP loafers.

This letter is being sent to protest this unauthmized use of a similar design on Tommy Hilfiger loafers,

which are confusingly similar to genuine CHARLES Pl-ITLIP designs. Tommy Hilfiger's use of the

design unfairly capitalizes on the goodwill and reputation embodied in the CHARLES PHILIP designs.

The public will and likely already has mistakenly believed that Tommy I-ilfigel"s use of the distinctive

designs me somehow authorized, sponsored by, or somehow affiliated with JBTL.

In addition to possible design patent infiingement, this type of deceptive trade practice constitutes trade

dress inliingement under Section 43(a) of the Lanham Act, 15 U.S .C. § 1125(a), and violates state trade

dress and dilutions statutes as well as conunon law p1ineiples of unfair competition and misappropriation.

As recently confirmed by the 211

d Circuit in an important case for the fashion industry, a distinctive color

or pattern on a shoe can fi.mction as a u·ademark. Loul2outin SA v. Saint ~ . . ! ! . r e n t A m e r i c a J - I o l d i n g ~2012 WL 3832285 (2"d Cir. Sept. 5, 2012).

We hereby demand that Tonuny Hilfiger immediately cease and desist from using the confusingly similar

designs on any products, advertisements or in cmmection with any services. We further request that

Tommy Hilfiger certify that Tonuny Hil:figer and any affiliated entity or agent (such as retailers selling

1890 Mcuietta Bou levard

Atlan ta. Georgia 3031 8

Q c 1 t e s _ 1 ; > ? _ ; ' 7 § - " · ' '404.228.7439 ext. 104

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Case 1:13-cv-06386-NRB Document 1-12 Filed 09/11/13 Page 1 of 1

the shoes) will (1) immediately cea<;e use of he distinctive designs or any trade dress confusingly similar

to the CHARLES PHI:UP designs and (2) rescind and refrain from any fwther adve1tisements bearing tlle

C H A R L J ~ S PHILIP distinctive designs or any marks or designs confusingly similar to the CHARLES

PHILIP designs.

I look forward to receiving your prompt response with regard to this matter.

Tlus letter is sent without prejudice to JBTL's rights and claims, all ofwhich are expressly reserved.

Regards,

Andrea Bates

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EXHIBIT I

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Case 1:13-cv-06386-NRB Document 1-13 Filed 09/11/13 Page 2 of 2

manattmanatt 1phelps 1phillips

April 22, 2013

VIA EMAIL AND FIRST CLASS MAIL

Andrea Bates, Esq.

Bates & Bates

1890 Marietta Boulevard

Atlanta, Georgia 30318

Re: Tommy Hilfiger "Kalani" Shoe

Dear Ms. Bates:

Darren W Saunders

Manatt, Phelps & Phillips , LLP

Direct Dial: (212) 790-4600Direct Facsimile: (212) 790-6303E-mail: [email protected]

Further to our letter of April II, 2013, we have carefully reviewed the claims in your

letter of March 25, 2013 on behalf of your client Jumbo Bright Trading Limited ("JBTL")

concerning a Tommy Hilfiger women's slip on shoe, style "Kalani." We represent and are

responding on behalf ofMBF Holdings LLC, the exclusive licensee of Tommy Hilfiger

Licensing LLC, for the production and sale of Tommy Hilfiger branded footwear and designer of

the "Kalani" shoe.

You claim that JBTL possesses common law rights in a stripe design, as shown and

described in two trademark applications filed in the United States Patent and Trademark Office

("PTO") under Serial Nos. 85/602452 and 85/602476. The claimed mark consists of a vertical

striped pattern on the inside lining of the shoe and a "three vertical stripe design" on the shoe rim

near the heel area. In addition, you refer to two design patents, U.S. D668,849 and D668,850.

You further claim that the use of a stripe design on the interior lining of the Tommy Hilfiger

Kalani shoes allegedly constitutes trade dress infringement, dilution and unfair competition

under federal and state law. You also claim "possible design patent infringement."

For the reasons set forth below, we disagree that the stripe design used inside the Kalani

shoe violates any claimed trademark, trade dress or design patent rights owned by JBTL.

First, as you implicitly acknowledge in your letter, your client's pending trademarkapplications provide no substantive rights or evidentiary presumptions. Therefore, in order to

assert a trade dress or unfair competition claim, JBTL would frrst need to prove that its stripe

design is distinctive, such that purchasers recognize the design as an indication of source.

Demonstration of acquired distinctiveness, or secondary meaning, generally entails rigorous

proofs, including, proof of substantially exclusive and continuous use in commerce of a claimed

mark over a significant period of time. However, your client claims to have first used the stripe

7 Times Square, New York, New York 10036 Telephone: 212.790.4500 Fax: 212.790.4545

Albany 1 Los Angeles 1· New York 1 Orange County 1 Palo Alto 1 Sacramento 1 San Francisco I Washington, D.C.

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manattmanatt I phelps 1phillips

Andrea Bates, Esq.

April 22, 2013

Page 3

design must necessarily include the visual elements pictured in the patent. Hence, the '849 .

patent is limited to a shoe with tassels on the front of the upper, a stripe design on one side of the

top ofthe upper and the name "CHARLES PHILIP" on the sole of the shoe. The '850 patent is

limited to a shoe with a leopard print design, a stripe pattern on one side of the top of the upper .

and the name 'CHARLES PHILIP' on the sole of the shoe. Since you do not in your letter, and

cannot, point to a Tommy Hilfiger shoe that includes all of these features, no claim for designpatent infringement can lie. ·

In view of the foregoing, continued assertion by JBTL of trademark/trade dress, unfair

competition, dilution or design patent infringement with respect to the Tommy Hilfiger Kalani

shoe would be utterly baseless. Accordingly, we consider this matter closed.

This letter is written with full reservation ofMBF Holdings LLC and Tommy Hilfiger

Licensing LLC's rights, remedies and defenses.

Very truly yours, / )W ~ ~ u ~Darren W. Saunders

cc: Simon Bock, Esq.

201366266.1

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EXHIBIT J

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Bates&Bates

Andrea Bates

LawFirrn HcDcfincd

VIA USPS AND EMAIL: [email protected]

Darren W Saunders

Manatt, Phelps & Phillips, LLPTrademark Counsel for MBF Holdings LLC7 Times SquareNew York, New York 10036

May 10, 2013

Re: Infringement of Charles Philip Trademarks by Tommy

Hilfiger's "Kalani" Shoe

Confidential Correspondence subject to Federal Rules of Evidence 408

Mr. Saunders,

As you know, we represent Jumbo Bright Trading Limited ("JBTL") with regard tointellectual property matters. We are in receipt of your cease and desist responsecorrespondence dated April 22, 2013 ("Response") on behalf of MBF Holdings

LLC ("MBF"), the exclusive licensee of Tommy Hilfiger Licensing LLC forproduction and sale of the Tommy Hilfiger "Kalani" shoe. Despite your claims tothe contrary, the Tommy Hilfiger "Kalani" shoe is infringing, as detailed below, onthe distinctive CHARLES PHILIP striped designs as described in trademark

applications U.S. Serial Nos. 85/602452 and 85/6022476. Specifically, JBTLbelieves that Hilfiger's "Kalani" shoe infringes JBTL's common law trademarkrights.

You are correct in your interpretation of trademark law that an infringement claimfor an unregistered trademark requires a demonstration that the mark hasacquired a secondary meaning in that consumers recognize the mark as anindication of source. JBTL is confident that the distinctive striped design hasacquired this secondary meaning, or acquired distinctiveness, in the eyes of theconsumer. Your reliance of the intermediate decision of a trademark attorney atthe USPTO is unfounded. You also claim that JBTL has not used the distinctive

striped designs exclusively but fail to p r o v · d ~ :r:1 vte · · l:le : s m n t . c ~ r ; y , ! , ! ! ! . . - - l l i EEinally, JBTL finds your argument that col) Q ·ers will not ·C!mfused b e c ~ sthe Hilfiger "Kalani" shoe does not c o n t ~ ~ t f . l e three verti " t ~ . r pes on the _q·erim near the heel area unpersuasive. " · ., ·· · ·

1890 Marietta Boulevard

Atlanta, GA 30318

[email protected]

404.228.7439 ext 104

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Case 1:13-cv-06386-NRB Document 1-16 Filed 09/11/13 Page 1 of 1

to the USPTO can be significant. Therefore , to lower costs, it is in the client'sbest interest to provide the USPTO with only the amount of evidence of a

secondary meaning necessary to approve the mark for publication. This often

takes several responses. There is certainly no judge that would hold that anexaminer's interim response of insufficient evidence to prove acquireddistinctiveness is somehow controlling or even persuasive . In addition, you claimthat JBTL will be unable to overcome the initial refusal because there is arequirement that the mark be in substantially exclusive and continuous use forfive years preceding the date when the claim of distinctiveness is made. JBTL is

unaware of this requirement to register a trademark under an acquireddistinctiveness claim. You mention 37 C.F.R. § 241(b) in your Response but thissection is only applicable if the applicant bases its argument for acquireddistinctiveness on one or more prior registrations, which JBTL does not. Thestatutory five .year presumption of a secondary meaning has no relevance in

litigation of an unregistered mark. Sand Hill Advisors, LLC v. Sand Hill Advisors,LLC, 680 F.Supp. 2d 1107 (N.D. Cal. 2010) .

Instead of your interpretation, the substantially exclusive time period has nobright line rule. Rather, courts treat the time period as only one factor to be takeninto account when examining the acquired distinctiveness claim. Courts have

found a trademark has acquired distinctiveness with a substantially exclusivetime period as short as five months. L.A. Gear, Inc. v. Thorn MeAn Shoe Co.,988 F.2d 11.17 (Fed. Cir. 1993). JBTL's first use in the United States of thedistinctive striped design was July 8, 2010. The immediate positive reception of

.press in fashion magazines and department stores of the JBTL trademarks,

combined with significant sales, is proof of acquired distinctiveness. Althoughyou do not disclose the first use of the infringing Hilfiger "Kalani" shoe in yourResponse, JBTL is confident that acquired distinctiveness can be demonstrated

before this use by MBF. At the very least, the presence of a secondary meaningof the JBTL trademarks is a fact question that will need to be examined by thecourt after extensive discovery.

In your Response, you claim that JBTL has not had substantially exclusive use ofthe distinctive striped design. You provide no basis for this conclusion other thanthat "Tommy Hilfiger has long used this design, known as the 'Ithaca Stripe' on

attire and accessories, among other products, for many years, and well before

your client's claimed date of first use." It is unclear from this paragraph whetheryou are claimin!;fpriority of use with shoes of the distinctive striped design . If thisis the case,. ple,ase clarify and provide evidence of substantially ·exclusive use.Whethe( Hilfiger has used the distinctive striped design on products other thanshoes has no bearing on this issue. As all trademark attorneys know, protection

of a trademark through an infringement action requires a product. JBTL does notclaim exclusive rights to the distinctive striped design on all products but rather,

as stated in the trademark applications, shoes. The substantially exclusive use

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by JBTL can be demonstrated on English style loafers such as the TommyHilfiger "Kalani" shoe. If you have proof to the contrary, please provide this.Please note that the Lanham Act does not require absolute exclusive use but

rather substantially exclusive use. The term "substantially" exclusive use makesallowance for minor uses and infringing uses. L.D. Kichler Co. v. Davoil, Inc.,192 F.3d 1349 (Fed. Cir. 1999).

You claim that because the Hilfiger "Kalani" shoe does not contain the threevertical stripe design on the shoe rim near the heel area there can be noconsumer confusion. The Lanham Act does not require the marks to be identicalfor a claim of trademark infringement to succeed. Instead, the courts usemultiple factors when determining whether there is a likelihood of confusion. Forexample, the 9th Circuit uses an eight (8) factor test to determine whether theinfringer's mark is likely to cause confusion. Often referred to as the Sleekcraft

factors, the factors include: 1) the similarity of the marks; 2) the strengths of theplaintiff's mark; 3) the proximity of the relatedness of the goods or services; 4)the defendant's intent on selecting the mark; 5) evidence of actual confusion; 6)the marketing channels used; 7) the likelihood of expansion into other markets;and 8) the degree of care likely to be exercised by purchasers. AMF v.Sleekcraft Boats, 599 F 2d 341 , 348-49 (9th Cir. 1979). This list is not

exhaustive and no single factor is outcome determinative. ld.

There is a strong likelihood that any court , especially the 9th Circuit, would rule in

JBTL's favor by weighing the S/eekcraft factors. In judging similarity, the 9thCircuit will consider the appearance of the marks in their entirety and as they

appear in the marketplace. GoTo.com, Inc. v. Walt Disney Co., 202 F.3d 1199(91h Cir. 2000). The court will also give more weight to the similarities in themarks as opposed to the differences. lQ. at 1206. The three vertical stripedesign is an insignificant portion of the overall trademark claimed by JBTL andcertainly not enough of a distinction to prevent consumer confusion. In additionto the similarity of the marks factor, an analysis of all the remaining Sleekcraftfactors show there is not only a potential for consumer confusion but a stronglikelihood.

To summarize the above, JBTL believes the Hilfiger "Kalani" shoe will likelycause consumer confusion in the marketplace and erode the value of JBTL's

trademarks. As such, JBTL requires that MBF immediately discontinuemanufacturing, selling and/or advertising these shoes. In addition, MBF mustprovide an accounting of the Hilfiger "Kalani" shoes that have been sold using thedistinctive striped design confusingly similar to the JBTL trademarks sosettlement options may be discussed.

I look forward to receiving your response with regard to this matter so we can

conclude settlement.

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This letter is sent without prejudice to JBTL's rights and claims, all of which are

expressly reseNed.

Regards,

Andrea E Bates

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EXHIBITK

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manattmanatt 1 phelps I phillips

June 13, 2013

VIA EMAIL AND FIRST CLASS MAIL

Andrea Bates, Esq.

Bates & Bates

1890 Marietta Boulevard

Atlanta, Georgia 30318

Re: Tommy Hilfiger "Kalani" Shoe

Dear Ms. Bates:

Darren W Saunders

Manatt, Phelps & Phillips, LLPDirect Dial: (212) 790-4600

E-mail: [email protected]

Further to our exchange of e-mails on May 31, 20 13, we are responding to your letter of

May 10, 2013, in which you have either mischaracterized or misunderstood certain points made

in our April22, 2013 letter.

With regard to the office action, we did not state nor do we contend that an interim office

action from the USPTO is controlling on the issue of secondary meaning. However, the USPTO

possesses unique expertise in this area and the examiner's comments regarding your client's

failure to prove secondary meaning are highly persuasive on the issue. The examiner sets forth

the reasons why Jumbo Bright Trading Limited's ("JBTL") claim of acquired distinctiveness isnot accepted, and these same reasons would most certainly be applicable in the context of any

litigation brought under the Lanham Act.

In addition, you are incorrect that 37 C.F.R. § 2.41.(b) is only applicable if the applicant

bases its argument for acquired distinctiveness on one or more prior registrations. This section

also provides that five years of substantially exclusive and continuous use of a mark in

commerce, in appropriate cases, can be prima facie evidence of distinctiveness. This is the

measuring stickutilized by the USPTO and most courts for determining acquired distinctiveness,

particularly with respect to a common design such as your client's. I n d e e d ~ the examiner cited

this section of the C.F.R. in the office action in connection with its refusal and noting that

"applicant has not been using its mark for a significant period of time." The point here,correctly made by the USPTO, is, in view ofthe simplicity of your client's striped design, three

years is not a significant period of time in which to establish secondary meaning.

Further, the L.A. Gear case cited in your letter is entirely inapposite. Among other

things, L.A. Gear concerned the total appearance, or trade dress, of a shoe and not merely an

ornamental interior lining. As the Federal Circuit noted, the shoe in L.A. Gear gained immediate

7 Times Square, New York, New York 10036 Telephone: 212.790.4500 Fax: 212.790.4545

Albany I Los Angeles 1 New York 1 Orange County 1 Palo Alto 1 Sacramento 1 San Francisco I Washington, D.C.

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manattmanatt I phelps I phillips

Andrea Bates, Esq.

June 13, 2013

Page 2

popularity and under the extraordinary circumstances, "public demand for this [shoe] design was

shown, by sales figures, to have been rapidly achieved." Here, even ifyour client's advertising

expenditures and sales figures for the shoe were considered to be extensive- which is highly

questionable - this does not mean that the striped interior lining of the shoe has acquired

secondary meaning, or for that matter, is recognized by consumers as anything other than mere

ornamentation.

With regard to your inquiry as to whether Tommy Hilfiger has used the Ithaca stripe on

footwear, and if such use was prior to JBTL, attached is a catalog excerpt from the Tommy

Hilfiger Women's Spring 2007 collection. As you can see, the Ithaca stripe - from which the

Charles Philip stripe pattern is virtually indistinguishable - was used for the interior lining for

at least one style from this collection. Other examples can be provided ifnecessary. However,

these shoes, as well as other third-party uses of extremely similar designs for the interior lining

for footwear, are in direct contravention to your client's claim of distinctiveness and secondary

mearung.

We note that your comments regarding the costs associated with demonstrating

secondary meaning and providing the USPTO with "only the amount of evidence of a secondary

meaning necessary to approve the mark for publication," suggest that you have additional

claimed evidence of secondary meaning. You are free to provide it to us for our consideration if

you wish. Otherwise, we stand by all of the points in our April 22, 2013 letter, ill which we

concluded that JBTL does not own protectable common law trademark rights to its striped

design.

In view ofthe foregoing, we see no point in engaging in an analysis of the Sleekcraft

factors. We e v ~ r t h e l e s s wish to point out that the prominent use of the famous Tommy Hilfiger

brand name and trademark on the insole of the Kalani shoe makes clear to consumers that the

shoe is a Tommy Hilfiger shoe, and therefore any consumer confusion is highly unlikely.

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Andrea Bates, Esq.

June 13, 2013

Page 3

In sum, for the reasons expressed in our April 22, 2013 letter and herein, our client will

not agree to discontinue manufacturing, selling and advertising the Tommy Hilfiger Kalani

shoes.

v ; : Q ; : : J ~Darren W Saunders

Enclosure

201616655.1

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EXHIBIT L

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BatesCBatesINTELLECTUAL PROPERTY LAW

VIA USPS AND E-MAIL

Darren W SaundersManatt, Phelps & Phillips, LLP

Trademark Counsel for MBF Holdings LLC7 Times SquareNew York, New York 10036

July 16, 2013

Re: Infringement of Charles Philip Trademarks by Tommy Hilfiger's

"Kalani" Shoe

Confidential Correspondence subject to Federal Rules of Evidence 408

Dear Mr. Saunders,

We are in receipt of your cease and desist response correspondence dated June 12,

2013 ("2nd Response") on behalf of MBF Holdings LLC ("MBF"), the exclusive licensee of

Tommy Hilfiger Licensing LLC for production and sale of the Tommy Hilfiger "Kalani"shoe. This 2nd Response was in regards to a letter sent on May 1O· 2013 in answer toyour response to a cease and desist letter dated March 25 , 2013 sent by us on behalf ofJumbo Bright Trading Limited ("JBTL"). The Tommy Hilfiger "Kalani" shoe is infringingon the distinctive CHARLES PHILIP striped designs as described in trademark

applications U.S. Serial Nos. 85/602452 and 85/6022476. Specifically, JBTL believesthat Hilfiger's "Kalani" shoe infringes JBTL's common law trademark rights. Further, as

JBTL holds design patents, they' too may be at issue in this case.

In your 2nd Response, you provide additional reasons why the CHARLES PHILIP stripeddesigns have not acquired ·a· secondary meaning. Your arguments are unpersuasive;there is little doubt that the CHARLES PHILIP marks have acquired a secondary

meaning and JBTL is willing to prove this through litigation.

First, the arguments you provide are based upon an USPTO interim office action and 37

C.F.R. § 2.41 (b). You admit that the office action refusal is not controlling on the issueof secondary meaning. However, you claim that the examiner's comments are highlypersuasive regarding JBTL's failure to prove secondary meaning . While the samearguments (as the examiner's comments) would be applicable in the context of

trademark litigation, an interim office action is hardly persuasive. JBTL is currentlypreparing evidence of a secondary meaning and will submit this evidence to the USPTO.

Your interpretation of 37 C.F.R. § 2.41 (b) is incorrect. You state that this sectionprovides that five years of substantially exclusive and continuous use of a mark in

commerce can be prima facie evidence of distinctiveness. JBTL agrees with that

ATLANTA I 1890 Marietta Boulevard NW, Atlanta, GA 30318

404.228 .7439 I 866.701.0404 I www.bates-bates.com

LOS ANGELES I IOWA CITY I WASHINGTON

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statement but it is illogical to derive that the absence of the five years of use is primafacie evidence that there is not distinctiveness. JBTL disagrees that most courts will usethis five year mark as a measuring stick. In fact, as stated in earlier correspondence, thestatutory five year presumption of a secondary meaning has no relevance in litigation ofan unregistered mark. Sand Hill Advisors, LLC v. Sand Hill Advisors, LLC , 680 F.Supp.2d 1107 (N.D. Cal. 201 0) . While JBTL is aware that certain courts have adopted thisfive year presumption, despite that the statute only allowing use by the USPTO,however, JBTL is unaware of any court relying on 37 C.F.R. § 2.41 (b) to state that lessthan five years of exclusive and continuous use of a mark in commerce creates apresumption that the mark lacks distinctiveness.

Your attempt to differentiate the L.A. Gear case is also unpersuasive . As stated in

earlier correspondence, L.A. Gear found that the trade dress of a shoe had acquireddistinctiveness with a substantially exclusive time period of five months. L.A. Gear, Inc.v. Thorn MeAn Shoe Co. , 988 F.2d 1117 (Fed. Cir. 1993). You separate L.A. Gear fromthe current issue by stating it concerned the total appearance, not an ornamental interiorlining of the shoe. This is a distinction without a difference as the important aspect iswhether the trade dress in question is being used to identify the origin . The striped liningon the inside of the CHARLES PHILIP loafer is obviously not merely ornamental but

being used to identify Charles Philip as the designer.

Lastly, you provide a catalog except from the Tommy Hilfiger Women 's Spring 2007collection which shows two pair of shoes using a similar striped pattern . These shoes

provide no guidance for the current controversy. Not only is there no proof they were on

the market when the CHARLES PHILIP loafers were introduced in 2010, but there isalso no evidence of the striped pattern being used as a trademark to signify the origin.To the contrary, the striped design is used on every loafer designed by Charles Philip

and prominently displayed in all of the advertising for the Charles Philip loafers. Seewww.charlesphilipshanghai.com . In addition, JBTL has policed the marketplace forothers attempting to capitalize on the goodwill built up in the striped designs. Thispatrolling includes numerous cease and desist letters along with a trademarkinfringement suit being brought against GAP, Inc. and its unauthorized use of the stripeddesign. See Jumbo Bright Trading Limited v. The GAP, INC., No. CV 12-08932 DDP(MANx).

As far as consumer confusion, there is little doubt the nearly identical striped designbeing used by the "Kalani" loafers will likely cause confusion . Despite your claims, theuse of the Tommy Hilfiger label will not assuage this likelihood of confusion . Labels mayhelp to dispel but "labeling of a product will not automatically alleviate a likelihood ofconfusion." Sunbeam Products, Inc. v. West Bend Co., 123 F.3d 246, 259 (5th Cir.1997). Courts have consistently found a likelihood of consumer confusion despitelabeling by the defendant. See Source Perrier. S.A. v. Waters of Saratoga Springs, Inc.,217 U.S.P.Q. 617 (S .D.N.Y. 1982); Nabisco Brands, Inc. v. Conusa Corp., 722 F.Supp1287 (M .D.N.C. 1989); Keds Corp. v. Renee International Trading Corp., 888 F.2d 215(1 st Cir. 1989); McNeii-PPC v. Guardian Drug Co ., 984 F.Supp 1066 (E.D. Mich. 1997);

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Aris-lsotoner Gloves, Inc. v. Fownes Bros. & Co., 594 F.Supp. 15 (S .D.N.Y. 1983); PAFS.r.l. v. Lisa Lighting Co. , 712 F.Supp. 394 (S .D.N.Y. 1989); Ferrari S.p.A. EsercizioAutomobile E Corse v. Roberts, 944 F.2d 1235 (6th Cir. 1991 ); and Life Indus. Corp. v.

Star Brite Distrib ., Inc. , 803 F.Supp 646 (E .D.N.Y. 1992). Like the infinite number ofcases where labeling has been found insufficient to alleviate the likelihood of consumerconfusion, it is unlikely a court will find the labeling of the loafers enough .

The striped design on the interior of the CHARLES PHILIP loafers is the main way thatCharles Philip has notified the public that the loafer was designed by him. As I am sureyou are aware, this is his designer "mark" and JBTL has been in the past and is stillwilling to litigate to protect the exclusivity and goodwill that Charles Philip has created in

the striped design. Please inform on whether your client wishes to continue using thedistinctive blue and white stripes in their loafers as JBTL will need to evaluate all legalremedies available to it. If not, JBTL requires that MBF immediately discontinuemanufacturing, selling and/or advertising these shoes.

I look forward to receiving your prompt response with regard to this matter.

This letter is sent without prejudice to JBTL's rights and claims, all of which areexpressly reserved.

Regards,f t z L ? ~AndreaE Bates