Notice of Opposition Opposer Information Applicant Information
Total Page：16
File Type：pdf, Size：1020Kb
Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA969381 Filing date: 04/24/2019 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 TLH Beauty LLC Entity limited liability company Citizenship Delaware Address 1458 Aloma Ave. Winter Park, FL 32789 UNITED STATES Attorney informa- Kristen Mollnow Walsh tion Nixon Peabody LLP 1300 Clinton Square Rochester, NY 14604 UNITED STATES [email protected], [email protected], [email protected] 585-263-1065 Applicant Information Application No 88170154 Publication date 03/26/2019 Opposition Filing 04/24/2019 Opposition Peri- 04/25/2019 Date od Ends Applicant Wang Weichao No.188,Zhengjiazhuang Vill., Yuanshang Town, Laixi, 266600 CHINA Goods/Services Affected by Opposition Class 003. First Use: 2016/10/11 First Use In Commerce: 2016/10/11 All goods and services in the class are opposed, namely: Adhesives for affixing false eyelashes;BB creams; Beauty masks; Blusher; CC creams; Cosmetic pencils; Cotton swabs forcosmetic purposes; Cotton wool for cosmetic purposes; Eye-shadow; Eye liner; Eye shadow; Eyebrow cosmetics; Eye- brow pencils; False eyelashes; Lip glosses; Lip liner; Lip rouge; Lipsticks; Liquid foundation (mizu-oshiroi); Make-up powder; Make-up removing lotions; Mascaras; Nail varnish; Perfumes; Skin whitening creams; Toilet waters; Varnish-removing preparations Grounds for Opposition No use of mark in commerce before application Trademark Act Sections 1(a) and (c) or amendment to allege use was filed Fraud on the USPTO In re Bose Corp., 580 F.3d 1240, 91 USPQ2d 1938 (Fed. Cir. 2009) Attachments Notice of Opposition.pdf(1571955 bytes ) Signature /kristenmollnowwalsh/ Name Kristen Mollnow Walsh Date 04/24/2019 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD TLH BEAUTY LLC, Opposer, Opposition No. _______ - vs - Serial No. 88/170154 WANG WEICHAO, Applicant. NOTICE OF OPPOSITION Opposer TLH Beauty LLC (“TLH Beauty” or “Opposer”), a Delaware limited liability company with an address of 1458 Aloma Ave., Winter Park, Florida 32789, hereby opposes registration of the application of Wang Weichao (“Applicant”), an individual with Chinese citizenship and an address of No. 188, Zhengjiazhuang Vill., Yuanshang Town, Laixi 266600 China, for registration of the mark G (and Design) (“Applicant’s Mark”), subject of Application Serial No. 88/170154 (the “Application”), published for opposition on March 26, 2019, and requests that registration to Applicant be refused. 1. TLH Beauty was formed in November 2017 for the purpose of designing, manufacturing, and selling make-up applicators, and related make-up and cosmetics items, including hand-held devices and specially designed, ergonomic hand tools and make-up holders for use by individuals with tremor or other physical limitations (collectively, “Opposer’s Goods”). 2. TLH Beauty is the owner of following pending United States Trademark Applications: 4845-1127-1061.3 - 2 - a. Serial No. 87/698018 for the mark GUIDE BEAUTY for “applicators for applying make-up, namely, wands, brushes, and sticks; hand-held devices for applying make-up, namely, nonmetal, specially-designed, ergonomic hand tools and make-up holders for use by individuals with tremor or other physical limitations; specialized nonmetal containers for household use for applying or storing make-up” in International Class 21, and “cosmetics; make-up; make- up kits comprised primarily of make-up and also containing make-up applicators and/or containers” in International Class 3, filed on November 27, 2017, under Section 1(b) of the Lanham Act, 15 U.S.C. § 1051(b); and b. Serial No. 88/373484 for the design mark shown below (“Opposer’s G Icon”), for “applicators for applying make-up, namely, wands, brushes, and sticks; hand-held devices for applying make-up, namely, nonmetal, specially- designed, ergonomic hand tools and make-up holders for use by individuals with tremor or other physical limitations; hand-held devices for applying false eyelashes, namely, nonmetal, specially-designed, ergonomic hand tools for use by individuals with tremor or other physical limitations; specialized nonmetal containers for household use for applying or storing make-up” in International Class 21, and “cosmetics; make-up; make-up kits comprised primarily of make-up and also containing make-up applicators and/or containers; false eyelashes” in International Class 3, filed on April 5, 2019, 4845-1127-1061.3 - 3 - under Section 1(b) of the Lanham Act, 15 U.S.C. § 1051(b) (“Opposer’s Application”). 3. At least as early as September 2018, Opposer was working with third parties in China on the manufacture of certain of Opposer’s Goods and, in that context, disclosed Opposer’s G Icon and its intention to use Opposer’s G Icon as a trademark for Opposer’s Goods. 4. The Application for Applicant’s Mark, which is shown below, was filed on October 26, 2018 under Section 1(a), 15 U.S.C. § 1051(a), asserts dates of first use of October 11, 2016, and covers the following goods in International Class 3: “Adhesives for affixing false eyelashes; BB creams; Beauty masks; Blusher; CC creams; Cosmetic pencils; Cotton swabs for cosmetic purposes; Cotton wool for cosmetic purposes; Eye-shadow; Eye liner; Eye shadow; Eyebrow cosmetics; Eyebrow pencils; False eyelashes; Lip glosses; Lip liner; Lip rouge; Lipsticks; Liquid foundation (mizu-oshiroi); Make-up powder; Make-up removing lotions; Mascaras; Nail varnish; Perfumes; Skin whitening creams; Toilet waters; Varnish-removing preparations.” 5. True and correct copies of the specimens submitted by Applicant with the Application and obtained from the USPTO’s TSDR database are attached as Exhibit A hereto (the “Specimens”). 4845-1127-1061.3 - 4 - 6. The Specimens consist of images of products with what, upon information and belief, appear to be white labels or tape, showing the Applicant’s Mark and the product descriptor (i.e., eye-shadow, wooden cotton swabs, and false eyelashes), but no other product information or wording or manufacturer information as, upon information and belief, is customary for cosmetic products sold in the United States. 7. Upon information and belief, the Specimens do not reflect bona fide use by Applicant of Applicant’s Mark in commerce, as that term is defined in the Lanham Act. 8. Opposer is not aware of any use of Applicant’s Mark by Applicant on or in connection with any products offered for sale in the United States. 9. Opposer’s investigations have not located any use of Applicant’s Mark by Applicant on or in connection with products offered for sale in the United States, or in marketing or advertising materials for any such products. 10. The Application was filed after Opposer disclosed Opposer’s G Icon to third parties in China. 11. Upon information and belief, Applicant’s Mark and Opposer’s G Icon, both of which are stylized “G” designs, are confusingly similar. 12. The goods listed in the Application and in Opposer’s Application are identical, related, or complementary of each other. 13. If Applicant’s Mark is allowed to register, upon information and belief, the USPTO may refuse registration of Opposer’s Application under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the grounds of likelihood of confusion with Applicant’s Mark. 14. Based on the foregoing, the registration of Applicant’s Mark will cause injury and damage to Opposer. 4845-1127-1061.3 - 5 - COUNT I – THE APPLICATION IS VOID 15. Opposer repeats and incorporates by reference the allegations in the preceding paragraphs as though fully set forth herein. 16. Upon information and belief, based on the results of due investigation and the physical appearance of the Specimens, Applicant was not using Applicant’s Mark in commerce at the time of the filing of the Application or at any time before or after filing. 17. Therefore, the application is therefore void ab initio. 15 U.S.C. § 1051(a). 18. Based on the foregoing, the registration of Applicant’s Mark will cause injury and damage to Opposer. COUNT II – FRAUD IN THE APPLICATION 19. Opposer repeats and incorporates by reference the allegations in the preceding paragraphs as though fully set forth herein. 20. The Application asserts, for Applicant’s Mark, a “first use anywhere date” of “at least as early as 10/11/2016” and a “first use in commerce date” of “at least as early as 10/11/2016,” and asserts that Applicant’s Mark “is now in use in such commerce.” The Application also contains a standard declaration as to the truth of the applicant’s statements in the application and was signed by Wang Weichao, Owner. 21. In an application filed under Section 1(a) of the Lanham Act, 15 U.S.C. § 1051(a), an applicant’s statement that the applied-for mark is in use in commerce on the goods listed in the application is a material fact. 22. Upon information and belief, based on the results of due investigation and the physical appearance of the Specimens, Applicant was not using Applicant’s Mark in commerce at the time of the filing of the Application. 4845-1127-1061.3 EXHIBIT A 4845-1127-1061.3 .