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Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.

gov ESTTA Tracking number: Filing date:

ESTTA545385 06/26/2013

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

Notice of Opposition
Notice is hereby given that the following party opposes registration of the indicated application.

Opposer Information
Name Entity Address Nancy S Cohen Individual 3744 Mandeville Canyon Road Los Angeles, CA 90049 UNITED STATES Matthew J. Norris Norris Law Group, P.C. 10940 Wilshire Boulevard, Suite 1600 Los Angeles, CA 90024 UNITED STATES mjnorris@norrislglaw.com Phone:310.443.4159 Citizenship UNITED STATES

Attorney information

Applicant Information
Application No Opposition Filing Date International Registration No. Applicant 85978198 06/26/2013 NONE Publication date Opposition Period Ends International Registration Date 05/28/2013 06/27/2013 NONE

Fifty Shades Limited Russell House, 140 High Street, Edgware Middlesex, HA87LW UNITED KINGDOM

Goods/Services Affected by Opposition
Class 010. All goods and services in the class are opposed, namely: Adult sexual stimulation aids, namely, benwa balls, paddles, vibrators, massage apparatus, artificial penises, artificial vaginas, penis rings, nipple clamps, dildos, dongs, butt plugs, penis sleeves, penis extensions, harnesses and love dolls; condoms

Grounds for Opposition
Priority and likelihood of confusion Other Trademark Act section 2(d) Common law trademark rights of Opposer in close-to-identical mark.

Mark Cited by Opposer as Basis for Opposition
U.S. Application No. Registration Date 77852023 NONE Application Date Foreign Priority 10/19/2009 NONE

Date Word Mark Design Mark Description of Mark Goods/Services NONE Class 025. First use: Clothing, namely, tee shirts, shirts, tops, pants, jeans, shorts, bottoms, jackets, suits, outerwear, underwear, hats, scarves, gloves and shoes SHADES OF GREY

Attachments

Notice of Opposition to Fifty Shades of Grey Mark 85978198.pdf(333338 bytes )

Certificate of Service
The undersigned hereby certifies that a copy of this paper has been served upon all parties, at their address record by First Class Mail on this date.

Signature Name Date

/Matthew J. Norris/ Matthew J. Norris 06/26/2013

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

Nancy Sidonie Cohen, Opposer, v. Fifty Shades Limited Corporation United Kingdom, Applicant.

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Application No.: 85/978,198

Mark: FIFTY SHADES OF GREY

NOTICE OF OPPOSITION

Nancy Sidonie Cohen, (“Cohen” or “Opposer”), an individual, with a residence address at 3744 Mandeville Canyon Road, Los Angeles, California 90049, believes she will be damaged by the registration of the mark FIFTY SHADES OF GREY that is the subject of U.S. Trademark Application No. 85/978,198 (the "Application") and hereby opposes registration of same under Section 13 of the Trademark Act, 15 U.S.C. § 1063.

In support of her opposition, Opposer, by and through her attorneys, states as follows:

1.

Opposer is a member of a limited liability company (All Shades United LLC) that

sells clothing for men and women and related items throughout the United States.

2.

At least as early as October 1 9 , 2009, Opposer (in her capacity as a 1

member of All Shades United LLC) has sold clothing and other items bearing the marks “Shades of Grey” and ‘Shades of Grey by Micah Cohen” in wide distribution throughout the United States. Opposer has continuously used the “Shades of Grey” mark since October 19, 2009 and has accrued common law trademark rights..

3.

Based upon her intended use of the mark, on October 19, 2009, Opposer filed

application Serial No. 77/852,023 for the mark “SHADES OF GREY” in class 25 (IC) and classes 22 and 39 (US) for “Clothing, namely, tee shirts, shirts, tops, pants, jeans, shorts, bottoms, jackets, suits, outerwear, underwear, hats, scarves, gloves and shoes.” Because of an opposition to that application, that mark has not yet been approved, but the Board has indicated that it will be approved within approximately 21 to 30 days from the date of this Opposition, in light of the fact that the sole opposer to that application has defaulted and is no longer actively participating in proceedings before the Board.

4.

Applicant filed the opposed Application on June 11, 2012, based on an intent to use

the mark “FIFTY SHADES OF GREY” in connection with “Adult sexual stimulation aids, namely, benwa balls, paddles, vibrators, massage apparatus, artificial penises, artificial vaginas, penis rings, nipple clamps, dildos, dongs, butt plugs, penis sleeves, penis extensions, harnesses and love dolls; condoms,” all in class 10. The Application was published for opposition on May 28, 2013.

5.

Opposer's date of first use of Opposer's "Shades of Grey" mark predates the filing

date of the Application.

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6.

Upon information and belief, Applicant has not used and is not currently using the

"Fifty Shades of Grey" mark in connection with the sale of any goods.

7.

Applicant's mark is closely identical to Opposer's SHADES OF GREY mark and is

intended for use on identical or related goods. Upon information and belief, Opposer avers that these goods will be promoted, sold and/or offered for sale in the same or similar channels of trade as those in which Opposer's goods bearing Opposer's mark are promoted and sold. Moreover, Applicant currently has two other pending applications for “Fifty Shades of Grey,” which marks are also closely identical to Opposer’s SHADES OF GREY mark and are intended for use on identical or related goods, and will be promoted, sold and/or offered for sale in the same or similar channels of trade as those in which Opposer’s goods bearing Opposer’s mark are promoted and sold.

8.

Upon information and belief, Applicant's goods bearing the mark and Opposer’s

goods bearing its mark will be promoted, sold and/or offered for sale to the same classes of consumers.

9.

Because Applicant's mark is nearly identical to Opposer's mark, if Applicant is

permitted to use and register Applicant's mark for its goods, as specified in the Application herein opposed, confusion among consumers and in the trade resulting in damage and injury to Opposer would be caused and would result by reason of the similarity between Applicant's mark and Opposer's mark.

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10.

Opposer has a valuable interest in Opposer's “Shades of Grey” mark.

11.

Applicant's use and registration of the “Fifty Shades of Grey” mark in connection

with Applicant's goods would therefore cause Opposer injury and damage, because such use and registration would be likely to cause confusion or mistake and otherwise interfere with Opposer's ability to use Opposer's “Shades of Grey” mark to identify Opposer as the source of Opposer’s goods.

12.

If Applicant were granted the registration opposed here, Applicant would obtain at

least a prima facie exclusive right to the use of its mark, and such registration (and such exclusive rights) would be a source of significant damage and injury to Opposer. This is particularly true to the extent that the grant of the registration opposed herein would contribute to registrations with regard to Applicant’s other pending applications for “Fifty Shades of Grey” marks.

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