ESTTA Tracking number: ESTTA1431931
`Filing date: 04/29/2025
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding no.
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`92085932
`
`Party Plaintiff
`Oofos, Inc.
`Correspondence SHARONA H. STERNBERG
`address SUNSTEIN LLP
`100 HIGH STREET
`BOSTON, MA 02110
`UNITED STATES
`Primary email: ssternberg@sunsteinlaw.com
`Secondary email(s): sabreu@sunsteinlaw.com, ksoule@sunsteinlaw.com
`617-443-9292
`Submission Motion to Suspend for Civil Action
`Filer's name Katherine W. Soule
`Filer's email ksoule@sunsteinlaw.com, sabreu@sunsteinlaw.com
`Signature /s/ Katherine W. Soule
`Date 04/29/2025
`Attachments Motion to Suspend TTAB Proceedings.pdf(176012 bytes )
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`Exhibit A - motion to suspend.pdf(1260956 bytes )
`Exhibit B - motion to suspend.pdf(70268 bytes )
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of Registration:
`
`Registration No.: 5,964,153
`Registration Date: January 21, 2020
`
`Registrant: Michela Klinz
`Mark: OOF (plus design)
`
`Oofos, Inc.,
`Petitioner,
`v. Cancellation No. 92085932
`Michela Klinz,
`
`Registrant.
`
`MOTION TO SUSPEND PROCEEDINGS PENDING DISPOSITION OF RELATED
`DISTRICT COURT ACTION
`
`Pursuant to 37 C.F.R. § 2.117(a) and TBMP § 510.02(a), Petitioner, Oofos, Inc.
`(“Petitioner”), through its counsel, hereby moves the Board to suspend the above-referenced
`proceeding (the “TTAB Proceedings’’) pending final disposition of the related federal district court
`case, Oofos, Inc. v. Nyky USA Corp. and Nyky S.r.l., Case No. 1:25-cv-02323, filed on March 20,
`2025, in the United States District Court for the Southern District of New York (the “District Court
`Proceedings”). Copies of the complaint and civil cover sheet from the District Court Proceedings
`are attached as Exhibit A.
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`The complaint seeks a judgment that, among other things, Registrant is engaged in federal
`trademark infringement, unfair competition, and false designation of origin in violation of Section
`43(a) of the Lanham Act, as well as state and common law trademark infringement and unfair
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`competition based, in part, on its use of the trademark at issue in the TTAB Proceedings.
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`It is “standard procedure” for the Board to suspend its administrative proceedings pending
`the outcome of related civil litigation when the parties are involved in court proceedings
`concerning the same marks and issues. New Orleans Louisiana Saint LLC v. Who Dat? Inc., 99
`USPQ2d 1550, 1552 (TTAB 2011) (quoting 5 McCarthy on Trademarks and Unfair Competition
`§ 32:47 (Sth ed. updated March 2024)). The civil action need not be dispositive of the Board
`proceedings. It is sufficient that the civil action has bearing on the issues before the Board to
`warrant suspension. Id.
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`Here, the District Court Proceedings involve the same parties', the same marks, and the
`same goods as those at issue in the TTAB Proceedings. In addition to the issues before the Board,
`there are broader issues involved in the District Court Proceedings, including, for example,
`infringement and unfair competition. In the District Court Proceedings, Petitioner seeks, among
`other remedies, damages and injunctive relief, which are not available in the TTAB Proceedings.
`Because the parties, marks, and issues in the TTAB Proceedings are the same as those included in
`the District Court Proceedings, suspension of the TTAB Proceedings is warranted.
`
`Additionally, judicial economy favors suspension of the TTAB Proceedings. See TBMP
`§ 510.02(a). Discovery in the District Court Proceedings will involve documents, depositions, and
`other information relevant to the TTAB Proceedings. It would be a waste of the Board’s and the
`parties’ time and resources to proceed with the TTAB Proceedings when related issues are pending
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`in the District Court Proceedings.
`
`' While Registrant, Michela Klinz, has not filed a Motion to Substitute NYKY S.r.1. in Cancellation
`No. 92085932, Ms. Klinz assigned the entire interest and goodwill in the mark OOF (plus design),
`which is the subject of Registration No. 5,964,153, to NYKY S.r.l.. See Exhibit B. According to
`USPTO records, the current owner of Reg. No. 5,964,153 is NYKY S.r.1., a party to the District
`Court Proceedings.
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`Petitioner has requested Registrant’s consent for this motion, but has not received a
`response from Registrant. Accordingly, Petitioner files this as an unconsented motion.
`WHEREFORE, Petitioner respectfully requests that the TTAB Proceedings be suspended
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`pending the outcome of the District Court Proceedings.
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`Dated: April 29, 2025 OOFOS, Inc.
`By its attorneys,
`
`/s/ Katherine W. Soule
`
`Steven A . Abreu
`
`Katherine W. Soule
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`SUNSTEIN LLP
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`100 High Street
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`Boston, Massachusetts 02110-2321
`Tel: (617) 443-9292
`sabreu@sunsteinlaw.com
`ksoule@sunsteinlaw.com
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`CERTIFICATE OF SERVICE
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`I hereby certify that a true and complete copy of Motion to Suspend Proceedings Pending
`Disposition of Related District Court Action has been served on April 29, 2025, to counsel for
`Registrant, Zachary Aria, by electronic mail at Zachary.aria@blankrome.com,
`jillian.taylor@blankrome.com, and trademarks @blankrome.com.
`
`/s/ Katherine W. Soule
`Katherine W. Soule
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`Exhibit A
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`Case 1:25-cv-02323-JGK Document1 Filed 03/20/25 Page 1 of 29
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`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF NEW YORK
`
`OOFOS, INC.,
`Plaintiff,
`Case No.: 1:25-cv-02323
`Vv.
`COMPLAINT
`NYKY USA CORP. and NYKY S.R.L.,
`JURY TRIAL DEMANDED
`
`Defendants.
`
`This is an action for trademark and trade name infringement, false designation of origin,
`and unfair competition. Plaintiff Oofos, Inc. (“Plaintiff’ or “OOFOS”) alleges as follows for its
`complaint against Defendants Nyky USA Corp. and Nyky S.r.l. (collectively, “Defendants” or
`“OOF WEAR”):
`
`NATURE OF THE ACTION
`
`1. OOFOS seeks damages and injunctive relief for trademark and trade name
`infringement, false designation of origin, and unfair competition by OOF WEAR in violation of
`the laws of the United States and the State of New York. Defendants’ use of OO/OOF-formative
`trademarks in connection with apparel and accessories, despite knowledge of OOFOS’ use of the
`OOFOS company name and OO, OO-formative, and OOFOS trademarks registered in connection
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`with shoes and apparel, among other things, constitutes willful violation of OOFOS’ rights.
`PARTIES
`2. Plaintiff Oofos, Inc. is a corporation duly organized and existing under the laws of
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`the State of Delaware and having its principal place of business at 350 Granite Street, Suite 1102,
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`Braintree, Massachusetts 02184.
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`Case 1:25-cv-02323-JGK Document1 Filed 03/20/25 Page 2 of 29
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`3. Upon information and belief, Defendant Nyky USA Corp. is a corporation
`organized and existing under the laws of the State of Delaware and having a place of business at
`350 Fifth Avenue, 41%' Floor, New York, New York 10118.
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`4. Upon information and belief, Defendant Nyky S.r.l. is an Italian company
`organized and existing under the laws of the country of Italy and having a principal place of
`business at Via delle Industrie 7, 31057 Silea (TV), Italy.
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`5. Upon information and belief Nyky USA Corp. is a subsidiary of Nyky S.r.1.
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`JURISDICTION AND VENUE
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`6. This action arises under federal law, state law, and common law. The federal law
`claims are federal trademark and trade name infringement in violation of Section 43(a) of the
`Lanham Act (15 U.S.C. § 1125(a)) and federal false designation of origin and unfair competition
`in violation of the Lanham Act (15 U.S.C. § 1125(a)). The state and common law claims are
`trademark infringement, unfair competition, and dilution in violation of New York statutory law
`and common law.
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`7. This Court has original subject matter jurisdiction over the federal law claims under
`28 U.S.C. § 1331 (federal question), 28 U.S.C. § 1338(a)-(b) (trademarks and unfair competition),
`and 15 U.S.C. § 1121 (Lanham Act).
`
`8. This Court has supplemental subject matter jurisdiction over the state law and
`common law claims under 28 U.S.C. § 1367(a).
`
`9. This Court has personal jurisdiction over Defendant Nyky USA Corp. because
`Nyky USA Corp. is at home in the Southern District of New York, where it maintains its principal
`place of business, and the exercise of jurisdiction would be reasonable. This Court has both specific
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`and general personal jurisdiction over Defendant Nyky USA Corp.
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`Case 1:25-cv-02323-JGK Document1 Filed 03/20/25 Page 3 of 29
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`10. This Court also has personal jurisdiction over Defendant Nyky S.r.l. pursuant to
`Federal Rule of Civil Procedure 4(k)(2) because Plaintiff's claims arise under federal law, Nyky
`S.r.1. is not subject to jurisdiction in any state’s courts of general jurisdiction, and this exercise of
`jurisdiction comports with due process. With regard to due process, Nyky S.r.1. has continuous and
`systematic contacts and minimum contacts with the entire United States that gives rise to its
`infringement, including broadly targeting the United States as a market for their products as a
`whole, through at least advertising, selling, and providing service and support to consumers in the
`United States and by appearing and exhibiting its products nationwide at least at the following:
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`e Liberty Fashion Fair, Las Vegas, February 2018
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`e Coterie New York, September 2018
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`e Coterie New York, September 2019
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`e Coterie New York, February 2020
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`e Coterie New York, February 2024.
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`11. Upon information and belief, in addition to advertising and selling products to
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`consumers in the United States through the OOF WEAR website at www.oofwear.com/us/, Nyky
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`S.r.1. sells products through national, regional, and local third-party retailers in the United States,
`including at least the following:
`e Anthropologie (national)
`e Shop Simon (national)
`e Margaret O’Leary (regional) (locations in California, Washington, Oregon, Colorado,
`Minnesota, Illinois, and Massachusetts)
`e V2V (regional) (locations in Michigan and South Carolina)
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`e Coco Goose (regional) (locations in Vermont and Rhode Island)
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`Case 1:25-cv-02323-JGK Document1 Filed 03/20/25 Page 4 of 29
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`e RELAX Hampton (local) (Bridgehampton, NY)
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`e Salchicha (local) (Bozeman, MT)
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`e Green Eyed Daisy (local) (Falmouth, MA)
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`e The Collective Park City (local) (Park City, UT)
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`e Archery Close (local) (Stowe, VT)
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`12. Upon information and belief, Defendant Nyky S.r.l. has been assigned ownership
`of federal applications and registrations of several trademarks in the United States, including OOF
`(plus design) (Serial No. 79/259,273), OOFWEAR (plus design) (Serial No. 79/405,428), and OO
`(plus design) (Serial No. 79/240,411), availing itself of the benefits and protections of the United
`States.
`
`13. Venue is proper in this district over Nyky USA Corp. under 28 U.S.C. §§ 1391(b)-
`(c) and 1400(b) because, inter alia, Defendant Nyky USA Corp. is at home in the State of New
`York, and venue is proper over Defendant Nyky S.r.l. under 28 U.S.C. §§ 1391(b)-(c) because, as
`a foreign defendant, it may be sued in any judicial district, including this district, and are subject
`to personal jurisdiction in this district.
`
`BACKGROUND
`Plaintiff and Its OOFOS Company Name and OOFOS and OO-Formative Trademarks
`
`14. Plaintiff Oofos, Inc. was originally formed in 2011 under the laws of the State of
`Nevada as OOFOS LLC. In 2018, OOFOS LLC was converted to Oofos, Inc. and was formed
`under the laws of the State of Delaware.
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`15. | OOFOS develops, manufactures, and sells innovative products, including footwear,
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`apparel, and related accessories (the “OOFOS Goods”).
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`Case 1:25-cv-02323-JGK Document1 Filed 03/20/25 Page 5 of 29
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`16. OOFOS’ footwear products are made with proprietary ““OOfoam” technology
`engineered to help reduce load and stress by absorbing more impact than traditional foam footwear.
`Oofos’ footbed design allows more even distribution of pressure across the footbed. OOFOS’
`OOfoam technology and footbed design allow more even distribution of pressure across the
`footbed, reducing fatigue-induced instability and imbalance up to five times faster than athletic
`footwear.
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`17. OOFOS? initial product was a recovery slide, but it has expanded its footwear line
`to include slides, sandals, shoes, boots, clogs, and slippers, all of which incorporate OOFOS’
`proprietary technology, and OOFOS has become the global leader in Active Recovery footwear.
`In addition to footwear, OOFOS offers apparel and related accessories, such as hats, shirts, and
`sweatshirts.
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`18. OOFOS’ website, www.oofos.com was registered on November 23, 2009, whereby
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`the OOFOS Goods have been continuously promoted to consumers in the United States under the
`OOFOS mark and additional OO and OO-Formative marks (as defined below) since at least as
`early as December 2011.
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`19. | OOFOS uses its OOFOS and OO-Formative marks in connection with the sale and
`marketing of all its products, including footwear, apparel, and related accessories, including
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`directly on the products, as shown in the examples below.
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`Case 1:25-cv-02323-JGK Documenti Filed 03/20/25 Page 6of 29
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`~
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`20. The OOFOS and OO-Formative marks include, but are not limited to, OOFOS’
`registered trademarks OOFOS, OOFOAM, OO (plus design), OOMG, FEEL THE OO,
`OOCANDOO, OOCLOOG, and OORIGINAL, the marks OOFOS (plus design), OOLALA, and
`OOMY STRIDE, which are the subject of pending applications filed by OOFOS with the USPTO,
`and the marks OOCREW, OOFAMILY, OOMEGA, OOCOOZIE, and OOAHH, which Oofos
`uses in connection with the promotion and sale of the OOFOS Goods.
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`21. | OOFOS promotes the OOFOS Goods in connection with its OOFOS and OO-
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`Formative marks across the United States, including since at least as early as December 2011,
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`through its website, www.oofos.com, social media accounts, print and digital marketing materials,
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`Case 1:25-cv-02323-JGK Document1 Filed 03/20/25 Page 7 of 29
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`and through its active participation at industry conferences and active memberships in industry
`organizations.
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`22. | OOFOS also promotes the OOFOS Goods in connection with its OOFOS and OO-
`Formative marks across the United States through partnerships with well-known individuals,
`professional sports associations, and industry partners. For example, OOFOS has partnered with
`celebrities, such as restaurateur Guy Fieri and Peloton social media influencer Leanne Hainsby-
`Alldis, organizations, such as the National Women’s Hockey League, the Las Vegas Raiders, and
`USA Gymnastics, and professional athletes, such as Elijah Bryant (NBA basketball), Alex Smith
`(NFL football), Jeremy Swayman (NHL hockey), J.D. Martinez (MLB baseball), Lee Whitwell
`(pickleball), Ashley Caldwell (aerial freestyle skiing), Chrystyn Fentroy (ballet), and Matt Russell
`(triathalons), among many others.
`
`23. | OOFOS is regularly mentioned in connection with its OOFOS Goods in industry
`publications and third-party articles and press releases with worldwide distribution since at least
`as early as 2012. For example, OOFOS has been mentioned by Conde Nast Traveler, The New
`York Times, The Washington Post, Sports Illustrated, and Good Housekeeping, among countless
`publications in print and online.
`
`24. ‘In addition to promoting the OOFOS Goods through print and online media,
`OOFOS promotes the OOFOS Goods through television media. For example, OOFOS regularly
`broadcasts television commercials promoting the OOFOS Goods to a wide audience, including a
`commercial during the 2024 Super Bowl, commercials during the 2024 NBA Conference
`Championships, and commercials during the 2024 Tony Awards. OOFOS has also been featured
`on popular television programs, such as The Today Show, Good Morning America, and Live! with
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`Kelly and Michael, among others.
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`Case 1:25-cv-02323-JGK Document1 Filed 03/20/25 Page 8 of 29
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`25. | OOFOS is also well known for its charitable activities. OOFOS is the official
`recovery shoe of Dana-Farber Cancer Institute and the Jimmy Fund. To-date, through the OOFOS
`Project Pink initiative, OOFOS has donated over $4.5 million towards Dana Farber Cancer
`Institute’s goal of finding a cure for breast cancer, including through annual campaigns, such as
`Project Pink-specific styles of shoe for which OOFOS donates 100% of the profits every October.
`
`26. | OOFOS has invested substantial time, money, and effort to advertise and promote
`the OOFOS Goods under the OOFOS and OO-Formative marks in the United States and around
`the world. OOFOS prominently displays the OOFOS and OO-Formative marks on its website and
`in all of its marketing materials. By virtue of its efforts, OOFOS has developed substantial
`recognition and goodwill in its mark.
`
`27. | OOFOS protects and enhances its hard-earned reputation by registering its OOFOS
`and OO-Formative marks. OOFOS owns over a hundred active trademark registrations and
`applications worldwide for its well-known OOFOS and OO-Formative marks, including the
`following U.S. federal trademark registrations.
`
`28. OOFOS owns U.S. Registration No. 4,140,410 for the mark OOFOS “Footwear”
`in International Class 25, filed on August 24, 2010, and registered on May 8, 2012, claiming use
`since at least as early as December 16, 2011. A true and correct copy of the certificate of
`registration for U.S. Registration No. 4,140,410 is attached as Exhibit A.
`
`29, OOFOS owns U.S. Registration No. 5,576,699 for the mark OOFOS in connection
`with “Clothing and apparel, namely, shirts, pullovers, and hats” in International Class 25, filed on
`April 12, 2017, and registered on October 2, 2018, claiming use since at least as early as April
`2016. A true and correct copy of the certificate of registration for U.S. Registration No. 5,576,699
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`is attached as Exhibit B.
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`Case 1:25-cv-02323-JGK Document1 Filed 03/20/25 Page 9 of 29
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`30. OOFOS owns U.S. Registration No. 4,407,859 for the mark OOFOAM in
`connection with “Footwear; foam cushioning sold as a component part of footwear” in
`International Class 25, filed on March 19, 2012, and registered on September 24, 2013, claiming
`use since at least as early as January 31, 2012. A true and correct copy of the certificate of
`registration for U.S. Registration No. 4,407,859 is attached as Exhibit C.
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`31. Through OOFOS’ significant and long-term promotional activities, its OOFOS
`company name and OOFOS and OO-Formative marks embody extensive goodwill and industry
`recognition.
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`Defendants Nyky USA Corp. and Nyky S.r.l. and Their Unlawful Conduct
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`32. | Upon information and belief, Nyky USA Corp. was formed in Delaware on May 7,
`2021. Upon information and belief, Defendants Michela Klinz and Alessandro Biasotto launched
`the OOF WEAR brand in Italy in 2016 and started using the OO/OOF-formative trademarks (the
`“Infringing OO/OOF Marks”), including OOF WEAR, OOFWEAR, OO (plus design), and OOF
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`(plus design), in the United States in or around 2018 when Defendants launched the OOF WEAR
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`website at www.oofwear.com/us and participated in the Liberty Fashion Fair in Las Vegas, long
`after OOFOS started using its OO/OOF-Formative marks in 2011 in connection with the OOFOS
`Goods in the United States.
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`33. | Like OOFOS, OOF WEAR is a consumer goods brand, offering apparel and related
`accessories (the “OOF WEAR Goods”).
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`34. | Both companies use and display marks containing OO or OOF in a similar fashion
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`on their websites. OOFOS, https://www.oofos.com/, and OOFWEAR,
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`https://www.oofwear.com/us/new-in/woman/jackets.html, display the OOFOS and OOFWEAR
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`marks in the top-left corner of their respective websites:
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`Case 1:25-cv-02323-JGK Document1 Filed 03/20/25 Page 10 of 29
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`Season of OO Annual Sale! 20% OFF sitewide with code GIFT20
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`@) FREE SHIPPING & RETURNS Find a Store Rewards
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`(>
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`OOFOS WOMEN MEN ABOUT US Q AB A
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`Discover the new Fall-Winter 24 collection
`
`_
`=
`ee: WEAR COLLECTION FW24 HIGHLIGHTS GIFT CARD SOCIAL WALL
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`35. The OOF WEAR Goods promoted and sold in connection with the Infringing
`OO/OOF Marks are identical, highly similar, and/or related to the OOFOS Goods promoted and
`sold in connection with OOFOS’ OOFOS and OO-Formative marks.
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`36. OOF WEAR uses the Infringing OO/OOF Marks in connection with the sale and
`marketing of its products, including apparel and related accessories, including directly on the
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`products, as shown in the examples below.
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`10
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`Case 1:25-cv-02323-JGK Document1 Filed 03/20/25 Page 11 of 29
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`[Se a ees
`€ :
`“Il ;
`ene.
`nee
`“
`ane
`*
`ty ;
`
`‘
`OOFWEAR
`THE SHAPES, LAB “Be
`
`DreieMeo rm FTAL es
`
`poictoretceres tegen
`
`CaNezzTEz
`
`gh on 7
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`37. Upon information and belief, both OOFOS and OOF WEAR market goods to the
`same class of consumers, including general consumers. OOFOS provides footwear, apparel, and
`
`related accessories. OOF WEAR provides apparel and related accessories.
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`11
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`Case 1:25-cv-02323-JGK Document1 Filed 03/20/25 Page 12 of 29
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`38. | The OO and OOF elements of the parties’ respective marks are identical. They do
`not differ in sight, spelling, or pronunciation. For example, OOFOS’ OOFOS and OO-Formative
`marks are highly similar to OOF WEAR’s OOF WEAR mark, as OOF is the dominant element of
`both parties’ marks, and the subordinate element of Defendants’ mark, WEAR, is descriptive.
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`39. Upon information and belief, OOF WEAR uses and displays the Infringing
`OO/OOF Marks on its website, promotional materials, and social media to market and promote
`the OOF WEAR Goods.
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`40. | The consumers to which both OOFOS and OOF WEAR market and sell goods
`under the OOFOS and OO-Formative marks and the Infringing OO/OOF Marks are the same —
`i.e., general consumers.
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`41. Both OOFOS and OOF WEAR market their goods using the same channels of trade
`and media, including their websites and social media.
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`42. | Both OOFOS and OOF WEAR offer for sale and sell their goods through the same
`channels of trade, including their websites and social media, as well as through third-party retailers,
`including national and international retailers, as well as local boutiques, including both online and
`in brick-and-mortar stores.
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`43. Upon information and belief, OOF WEAR markets and sells the OOF WEAR
`Goods under the Infringing OO/OOF marks in the same geographic regions that OOFOS markets
`and sells the OOFOS Goods under the OOFOS and OO-Formative marks, including in New York.
`
`44. Upon information and belief, OOF WEAR has been featured in third-party
`publications with worldwide distribution, such as Cosmopolitan, Vogue, Elle, and Marie Claire in
`print and/or online publications. OOFOS has also been featured in some of the same third-party
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`publications, including at least Cosmopolitan and Elle.
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`12
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`Case 1:25-cv-02323-JGK Document1 Filed 03/20/25 Page 13 of 29
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`45. As aresult of OOF WEAR’s marketing and sale of the OOF WEAR Goods in
`connection with the Infringing OO/OOF marks in the United States, consumers are likely to be
`confused such that consumers will erroneously believe that OOF WEAR is affiliated, connected,
`or associated with, or in some way related OOFOS or the OOFOS Goods offered under the OOFOS
`and OO-Formative marks.
`
`46. Michela Klinz owns U.S. Registration No. 5,964,153 for the mark OOF (plus
`design), shown below, in connection with: “Perfumes; perfumery; extracts of flowers being
`perfumes; bases for flower perfumes, namely, floral fragrance agents; oils for cosmetic purposes;
`oils for perfumes and scents; oils for toilet purposes; ethereal oils; scented linen water; toilet water;
`eau de cologne; lotions for cosmetic purposes; cosmetics; deodorants for human beings or for
`animals; after-shave lotions; phytocosmetic preparations; air fragrancing preparations; bath
`preparations, not for medical purposes; deodorant soap; musk being perfumery; cleansing milk for
`toilet purposes; cosmetic hair care preparations and treatments; shampoos; hair creams; hair spray;
`cosmetic kits comprised of lipstick and lip gloss; incense; incense cones; joss sticks; cosmetic day
`creams; skin cleansing lotion; make-up; body deodorants being perfumery; natural perfumery;
`perfumed facial tissues for cosmetic use; scented body spray; fragranced face preparations,
`namely, facial moisturizers; body sprays non-medicated; essential oils for personal use; skin soap;
`non-medicated bath oils; bath oils for cosmetic purposes; bath and shower oils non-medicated;
`bath foam” in International Class 3, “Bags, namely, all-purpose carrying bags; handbags; purses;
`pocket wallets; suitcases; rucksacks; daypacks; animal skins; leatherboard; girths of leather;
`imitation leather; haversacks; umbrellas; combination walking sticks and umbrellas; bags made of
`imitation leather” in International Class 18, and “Clothing, namely, shirts, pants, socks; jerseys;
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`undershirts; shirts; jackets; casual jackets; blousons; trousers; denim jeans; trousers for children;
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`short trousers; denim jackets; gloves; scarves; pocket squares; collar protector strips for application
`to clothing collars; waist belts; leather belts; belts; gilets; cravats; hats; berets; tee-shirts” in
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`International Class 25, filed on February 4, 2019.
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`47. On August 7, 2024, OOFOS filed a Petition for Cancellation of U.S. Registration
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`No. 5,964,153 with the United States Trademark Trial and Appeal Board (Cancellation No.
`92085932), seeking to cancel the OOF (plus design) registration based on the OOFOS’ priority in
`its OO/OOF-Formative marks and based on likelihood of confusion. The cancellation proceeding
`is ongoing.
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`48. A true and correct copy of the Petition for Cancellation No. 92085932 is attached
`as Exhibit D.
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`49. Upon information and belief, Michela Klinz assigned her rights to Registration No.
`5,964,153 to Defendant Nyky S.r.l. by filing a Change of Ownership on December 16, 2024, of
`the underlying International Registration that forms the basis for Registration No. 5,964,153 under
`Section 66(a) of the Trademark Act. Once the International Bureau of WIPO records the change
`of ownership in the International Register, the USPTO will update the USPTO’s trademark
`database to reflect the assignment to Nyky S.r.l. See TMEP § 502.02(b).
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`50. Alessandro Biasotto owns U.S. Registration No. 5,742,256 for the mark OO (plus
`design), shown below, in connection with “Travelling bags; overnight bags; sports bags; gym bags;
`handbags; purses; pocket wallets; valises; backpacks; daypacks; animal skins; imitation leather;
`haversacks; umbrellas; walking sticks” in International Class 18 and “Sweaters; clothing, namely,
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`jerseys; hosiery; undershirts; long-sleeved undershirts; short-sleeved undershirts; shirts; clothing,
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`namely, jackets; coats; sport coats; blousons; trousers; denim trousers; denim pants; jeans; blue
`jeans; trousers for children; short trousers; denim jackets; heavy jackets; T-shirts; clothing,
`namely, gloves; scarfs; pocket squares; mufflers, namely, neck scarfs; waist belts; belts made of
`leather; belts made of textile materials; gilets; cravats; hats; berets” in International Class 25, filed
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`on February 19, 2018.
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`51. On August 7, 2024, OOFOS filed a Petition for Cancellation of U.S. Registration
`No. 5,742,256 with the United States Trademark Trial and Appeal Board (Cancellation No.
`92085933), seeking to cancel the OO (plus design) registration based on non-use of the mark.
`Defendant Alessandro Biasotto failed to respond to the Petition for Cancellation by the deadline
`set by the TTAB, and the TTAB issued a Notice of Default on September 27, 2024. Defendant
`Alessandro Biasotto failed to respond to the Notice of Default by the deadline of October 27, 2024,
`set by the TTAB. The TTAB issued a default judgment on November 14, 2024, against Defendant
`Alessandro Biasotto, granting OOFOS’ petition for cancellation and instructing that Registration
`No. 5,742,256 will be cancelled in due course by the Commissioner for Trademarks.
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`52. A true and correct copy of the Petition for Cancellation No. 92085933 is attached
`as Exhibit E.
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`53. A true and correct copy of the default judgment issued in connection with
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`Cancellation No. 92085933 on November 14, 2024, is attached as Exhibit F.
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`54. Upon information and belief, Alessandro Biasotto is the President of Defendant
`Nyky USA Corp. and is the President of Defendant Nyky S.r.1.
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`55. Nyky S.r.l. owns U.S. Trademark Application Serial No. 79/405,428 for the mark
`OOFWEAR (plus design), shown below in connection with “Perfumes; perfumery; extracts of
`flowers [perfumes]; oils for cosmetic purposes; oils for perfumes and scents; oils for toilet
`purposes; ethereal oils; scented water; toilet water; eau de cologne; lotions for cosmetic purposes;
`cosmetics; deodorants for human beings or for animals; after-shave lotions; phytocosmetic
`preparations; air fragrancing preparations; bath preparations, not for medical purposes; deodorant
`soap; musk [perfumery]; cleansing milk for toilet purposes; hair preparations and treatments;
`shampoos; hair creams; hair spray; cosmetic kits; incense; incense cones; joss sticks; day creams;
`skin cleansing lotion; make-up; body deodorants [perfumery]; natural perfumery; perfumed
`tissues; scented body spray; fragrance preparations; body sprays [non-medicated]; essential oils
`for personal use; soap; non-medicated bath oils; bath oils for cosmetic purposes; bath and shower
`oils [non-medicated]; bath foam” in International Class 3, “
`Spectacles; spectacle lenses; prescription eyeglasses; spectacle frames; sunglasses; goggles for
`sports; anti-glare glasses; smartglasses; pince-nez; spectacle cases; covers for glasses; optical
`goods; eyewear pouches; sunglass nose pads; spectacle nose pads; correcting lenses [optics];
`spectacle lens blanks; glass ophthalmic lenses; replacement lenses for glasses; spectacle frames
`made of metal; spectacle frames made of plastic; fashion eyeglasses; parts for spectacles; spectacle
`temples; smartwatches; cases for electronic diaries; carrying cases for cellular phones” in
`International Class 9, “Bags; handbags; purses; pocket wallets; suitcases; rucksacks; daypacks;
`animal skins; leatherboard; girths of leather; imitation leather; haversacks; umbrellas; combination
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`walking sticks and umbrellas; bags made of imitation leather” in International Class 18, “Clothing;
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`jerseys [clothing]; undershirts; shirts; jackets [clothing]; coats; blousons; trousers; denim jeans;
`trousers for children; short trousers; denim jackets; gloves [clothing]; scarves; pocket squares;
`waist belts; leather belts [clothing]; belts [clothing]; gilets; cravats; hats; berets; tee-shirts” in
`International in International Class 25, and “Business assistance, management and administrative
`services; sales promotion; arranging of buying and selling contracts for third parties; online retail
`services in relation to clothing; retail services connected with the sale of clothing and clothing
`accessories; provision of assistance [business] in the operation of franchises; provision of
`assistance [business] in the establishment of franchises; advisory services (business -) relating to
`the operation of franchises; business advice relating to franchising; advertising; advertising by
`transmission of on-line publicity for third parties through electronic communications networks;
`publicity and sales promotion services” in International Class 35, filed July 11, 2024, originally
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`filed on behalf of Michela Klinz.
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`OO wear
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`56. A true and correct copy of Application Serial No. 79/405,428 is attached hereto as
`Exhibit G.
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`57. A true and correct copy of the document evidencing the change of ownership from
`Michela Klinz to Nyky S.r.1. of Application Serial No. 79/405,428 is attached hereto as Exhibit H.
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`58. Michela Klinz and Alessandro Biasotto have filed numerous applications for
`registration of the Infringing OO/OOF Marks in various jurisdictions, including at least the United
`States, Canada, the United Kingdom, the European Union, Italy, Hong Kong, Mongolia, and South
`Korea, and applications to the International Register with designations in at least the United States,
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`South Korea, China, Japan, Mexico, Russian Federation, Ukraine, Switzerland, Turkey, Antigua
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`and Barbuda, Armenia, Azerbaijan, Belarus, Cuba, Georgia, Kazakhstan, Kyrgyztan, Moldova,
`Tajikistan, and Turkmenistan, the earliest of which were filed in December 2015, long after
`OOFOS began using and seeking to register its OOFOS and OO-Formative marks worldwide.
`Some of these applications and registrations have been recently assigned to Defendant Nyky S.r.1.
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`59. Some of the applications for the Infringing OO/OOF Marks were filed by
`Def