ESTTA982841 06/24/2019 in the UNITED STATES PATENT and TRADEMARK OFFICE BEFORE the TRADEMARK TRIAL and APPEAL BOARD Proceeding 9
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Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA982841 Filing date: 06/24/2019 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD Proceeding 91248465 Party Plaintiff Janna Sheehan Correspondence JOHN T MAHER Address LAW OFFICE OF JOHN T MAHER 105 E 122ND ST AC TRANCE NEW YORK, NY 10035 UNITED STATES [email protected] 646-675-8909 Submission Motion to Amend Pleading/Amended Pleading Filer's Name /John T. Maher/ Filer's email [email protected] Signature /John T. Maher/ Date 06/24/2019 Attachments Notice of Motion and AMENDED NOTICE OF OPPOSITION 6.24.2019.pdf(304618 bytes ) EXHIBIT A AMENDED OPPOSITION MATTETRANCE APPELLATE BRIEF.pdf(1036982 bytes ) EXHIBIT B. Amended Opp Blitztrance Application.pdf(31077 bytes ) IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD ________________________________X JANNA S. JACKSON Opposer, Opposition No. v. Application Serial No. 88075517 PAT MCGRATH COSMETICS LLC, Mark: BLITZTRANCE Applicant. ________________________________X OPPOSER’S MOTION TO AMEND NOTICE OF OPPOSITION JANNA S. JACKSON nee SHEEHAN (the “Opposer”) dba AC Trance, Inc., is an individual residing at in California with an address designated as P.O. Box 1536, Ojai, CA 93024, who maintains her office and principal place of business located at 345 Willis Avenue Suite 109, Camarillo, CA 93010. Opposer serves and submits her Notice of Motion to Amend Opposition and Amended Notice of Opposition pursuant to TBMP §2.107 which permits an Amendment of pleadings and other documents in an opposition proceeding (See, TBMP §2.107; 48 FR 23136, May 1983; 68 FR 55748). Opposer owns the TRANCE trademark registered under U.S. Trademark Application Serial No. 88124294 (hereinafter also referred to as “Opposer’s Mark” or “TRANCE”), which was registered in August 30, 2005. Applicant PAT MCGRATH COSMETICS LLC (the “Applicant”), is a corporation with an address at 126 Fifth Ave., New York NEW YORK 10011. 1 Opposer seeks to file an Amended Notice of Opposition in the inter partes Opposition proceeding concerning the proposed mark “BLITZTRANCE” (“Applicant’s Mark” or “BLITZTRANCE”) on August 13, 2018 and published for public opposition in the Official Gazette on January 15, 2019. Opposer’s Amended Notice of Opposition states several grounds against allowing such registration upon the Principal Register. Opposer believes that the Amended Notice of opposition will clarify the facts and relief requested. No prejudice will result because no further deadlines have passed and Applicant has not yet responded to Opposer’s duly filed Notice of Opposition. No prior application to file an Amended Notice of Opposition has been made or requested. Dated: New York, NY June 24, 2019 Respectfully submitted, /John T. Maher, Esq./ Law Office of John T. Maher Attorneys for Opposer Janna S. Jackson (Sheehan) 105 E. 122nd St. New York, NY 10035 646 675 8909 [email protected] 2 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD ________________________________X JANNA S. JACKSON Opposer, Opposition No. 91248308 v. Application Serial No. 88075517 PAT MCGRATH COSMETICS LLC, Mark: BLITZTRANCE Applicant. ________________________________X AMENDED NOTICE OF OPPOSITION JANNA S. JACKSON nee SHEEHAN (the “Opposer”) dba AC Trance, Inc., is an individual residing at in California with an address designated as P.O. Box 1536, Ojai, CA 93024, who maintains her office and principal place of business located at 345 Willis Avenue Suite 109, Camarillo, CA 93010. Opposer serves and submits her Amended Notice of Opposition pursuant to TBMP §2.107 which permits an Amendment of pleadings and other documents in an opposition proceeding (See, TBMP §2.107; 48 FR 23136, May 1983; 68 FR 55748). Opposer owns the TRANCE trademark registered under U.S. Trademark Application Serial No. 88124294 (hereinafter also referred to as “Opposer’s Mark” or “TRANCE”), which was registered in August 30, 2005. Applicant PAT MCGRATH COSMETICS LLC (the “Applicant”), is a corporation with an address at 126 Fifth Ave., New York NEW YORK 10011. 3 Applicant filed a proposed registration for the mark “BLITZTRANCE” (“Applicant’s Mark” or “BLITZTRANCE”) on August 13, 2018 and published for public opposition in the Official Gazette on January 15, 2019, and, Opposer further opposes and amends its opposition to the same. As grounds for this Amended Notice of Opposition, Opposer, through counsel, alleges as follows: FACTUAL BACKGROUND The Parties 1. Opposer Jackson is an individual who operates a business in the fragrance and cosmetics industries through her corporate entity AC Trance, Inc. DBA Trance Essence. 2. Opposer has also worked as a consultant in the fragrance and cosmetics industry since 2007 and her professional skill and acumen are valued by manufacturers, hotel chains, beauty companies and others in the industry. 3. Upon information and belief, Applicant is a large beauty product and cosmetics brand. Opposer’s Ownership, Prior Registration and Use of the TRANCE Mark 2. Opposer is the owner of the TRANCE Mark and has actively and continuously used the TRANCE trademark (Registration No. 2990447) in commerce since April 2007. 3. Opposer owns the website “www.tranceessence.com”. The Tranceessence.com domain name was registered on August 1, 2011, and since then it has been used to advertise and promote a variety of beauty products and cosmetics. 4. Opposer’s creative vision for the TRANCE mark is to allow the consumer to transcend the routine of daily life and aspire to a higher state of consciousness through the use of her 4 fragrances, beauty products and cosmetics. In the view of Opposer, the TRANCE mark conveys this aspiration in a unique and powerful manner which is associated with her products. Applicant’s Registration of the BLITZTRANCE Mark 5. Applicant is the owner of U.S. Trademark Application Serial No. 88075517 for the “BLITZTRANCE” Mark, in standard characters, for the following goods: “Fragrance sprays for personal use, perfumes; essential oils for personal use; anti-perspirants and deodorants for personal use; cosmetics; non-medicated skin care preparations; hair care preparations; soaps for personal use,” in International Class 3. U.S. Trademark Application Serial No. 88075517 was filed on 08/13/2018 and was published for public opposition in the Official Gazette on 01/15/2019. Upon information and belief, Applicant knew of the Opposer’s prior registration, ownership and use in commerce of the TRANCE Mark at the time it sought to register the BLITZTRANCE Mark. Opposer’s Use and Intended Use of the TRANCE Mark 6. The Opposer registered her TRANCE Mark in 2003 for goods and services including “essential oils, for personal use; cosmetics; skin care products, namely, skin lotions, cremes, balms and cleansers; hair care products, namely conditions” under an International Class 3 registration. 7. Thereafter, Opposer began to use her TRANCE Mark in commerce and advertise and display it to the public. 8. Opposer also intends to further expand the use of the TRANCE Mark on her products into the categories of cosmetics, makeup and fragrance, as well as emerging categories of goods, was she is able to design, source necessary supplies, finance, produce, market, distribute and sell her branded products. In the consumer marketplace, brands in the fragrance, beauty and 5 cosmetics industry are evolving to merge across traditional product categories and present new choices to consumers choices for multiple products in new formats such as fragrances incorporated into body cremes and lotions, skincare, makeup and in new formats such as powdered perfumes and scented lipsticks. Similarity Between the Marks and Likelihood of Confusion 9. Many of Opposer’s TRANCE Mark branded goods consist of items which may be described as both beauty products, makeup and cosmetics. Opposer’s TRANCE Mark and Applicant’s BLITZTRANCE marks are identical in-part because the both are registered for the same Class 3 registration, both contain the product category “cosmetics”, the goods of both may be considered beauty products, and both target the same demographic of consumers. 10. Opposer’s and Applicant’s goods are confusingly similar because they both fall within the same or similar product categories. Goods such as beauty products and cosmetics are traditionally located within the same sections of stores, marketed in similar manners, and advertised and sold to a similar demographic consisting of individuals interested in enhancing their personal appearance for aesthetic reasons. 11. Applicant’s use of the BLITZTRANCE Mark is without justification or permission and, upon information and belief, was sought to be registered with knowledge of Opposer’s prior registration of the TRANCE Mark. Applicant’s Infringing Use of the MATTETRANCE Mark 13. On November 23, 2016, Applicant filed an intent-to-use application to register the mark MATTETRANCE on the Principal Register. Upon information and belief, Applicant knew of the Opposer’s prior registration, ownership and use in commerce of the TRANCE Mark at the time it sought to register the MATTETRANCE Mark. 6 14. On January 25, 2017, the Examining Attorney issued a non-final Office action, refusing to register the MATTETRANCE Mark under Section 2(d) of the Trademark Act due to the likelihood of confusion with the Opposer’s prior registered TRANCE Mark. 15. Thereafter, Applicant filed a response on July 25, 2017, alleging further arguments in favor of registration of the MATTRANCE Mark. 16. The trademark Examining Attorney then issued a final Office action on August 18, 2017, maintaining the refusal to register Applicant’s MATTETRANCE Mark under Section 2(d). 17. On February 20, 2018, Applicant commenced an instant appeal of the Board’s denial of the Applicant’s MATTETRANCE Mark registration and filed a request for reconsideration, which was subsequently denied by the Examining Attorney on March 9, 2018. 18. The trademark Examining Attorney then issued a final PTO office action on or about August 18, 2017, maintaining the refusal to register Applicant’s MATTETRANCE Mark under Section 2(d).