Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA1052832 Filing date: 05/02/2020
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 Binbin Xie Entity Individual Citizenship CHINA Address No. 37 Qiqiao, Yuanguang Village Meitang Town Puning, 515342 CHINA
Attorney informa- Jonathan G. Morton tion 1395 Brickell Ave. Suite 300 Miami, FL 33131 UNITED STATES [email protected] 305-764-9179
Applicant Information
Application No 88428729 Publication date 04/07/2020 Opposition Filing 05/02/2020 Opposition Peri- 05/07/2020 Date od Ends Applicant Lai Guoheng Rm.201, No.73 Banjiulin Village, Qingping Town Lianjiang, Guangdong, 524400 CHINA Goods/Services Affected by Opposition
Class 003. First Use: 2019/03/10 First Use In Commerce: 2019/03/10 All goods and services in the class are opposed, namely: Adhesives for affixing false eyelashes;Air fragrancing preparations; Cosmetics; Ethereal oils; Eye-shadow; Eyebrow cosmetics; False eye- lashes; Lavender oil; Lipstick; Lipsticks; Make-up preparations; Nail care preparations; Phytocosmetic preparations; Preparations for cleaning dentures; Skin whitening creams; Stain removers Grounds for Opposition
Priority and likelihood of confusion Trademark Act Section 2(d) No use of mark in commerce before application Trademark Act Sections 1(a) and (c) or amendment to allege use was filed No bona fide intent to use mark in commerce for Trademark Act Section 1(b) identified goods or services Marks Cited by Opposer as Basis for Opposition
U.S. Application 88888650 Application Date 04/27/2020 No. Registration Date NONE Foreign Priority NONE Date Word Mark OWNEST Design Mark
Description of NONE Mark Goods/Services Class 003. First use: First Use: 2018/03/01 First Use In Commerce: 2018/03/01 Concealers for skin, face, body; Eye-shadow; Lip gloss; Lipsticks; Liquid founda- tion (mizu-oshiroi); Massage oil; Nail grooming products, namely, tips, glue, lac- quer and glitter; Nail polish
U.S. Registration 4922284 Application Date 07/12/2015 No. Registration Date 03/22/2016 Foreign Priority NONE Date Word Mark OWNEST Design Mark
Description of NONE Mark Goods/Services Class 009. First use: First Use: 2014/03/21 First Use In Commerce: 2015/02/22 Air quality measurement apparatus, namely, particle counters; Amplifiers; Bags adapted for laptops; Batteries; Battery chargers; Camera mounts and supports; Cameras; Car video recorders; Cases for mobile phones; Cell phone battery chargersfor use in vehicles; Cell phone straps;Chronographs for use as special- ized time recording apparatuses; Computer hardware and computer peripherals; Converters for electric plugs; Covers for electric outlets; Display screen protect- ors for providing shade and privacy specially adapted to electronic devices, namely, laptops, cell phones, personal digital assistants; Earphones; Electric cables, wires, conductors and connection fittings therefor; Electric current switches; Electric light switches; Electric power converters; Electrical pickups for use with musical instruments; Eyeglass cases; Eyeglasses; Fitted plastic films known as skins for covering and providing a scratch proof barrier or protection for electronic devices, namely, MP3 players, mobile telephones, smart tele- phones, digital cameras, global positioning systems and personal digital assist- ants; GPS navigation device; Headphones; Lap-counting devices, namely, coun- ters for use during sporting activities; LED and HID light controls; Light systems comprising light sensors and switches; Loudspeakers; Mousepads; Plastic mol- ded support base speciallyadapted to prop up laptop computers; Portable media players; Portable photography equipment, namely, reflectors, tripods, light stands and supports and bags specially adapted for these goods; Portable tele- phones; Protective covers and cases for cell phones, laptops and portable me- dia players; Radio transmitters and receivers for remote controls, radio controls; Remotely-controlled sub-aquatic video camera containing a TV camera, trans- mitter, receiver and microphone to record, detect, measure, survey and locate objects underwater; Set-top boxes; Slide orphotograph projection apparatus; Smart card readers; Solar batteries; Sound recording apparatus; Spectacle frames; Sunglasses; Telematics apparatus, namely, wireless Internet devices which provide telematic services and have a cellular phone function; Tele- scopes; Video monitors;Wearable digital electronic devices comprised primarily of software for viewing, sending and receiving texts, emails, data and informa- tion from smart phones, tablet computers and portable computers and display screens and also featuring a bracelet; Wireless cellular phone headsets; Wire- less communication devices for voice, data or image transmission; Wireless in- door and outdoor speakers; Wirelesstransmitters and receivers
Attachments 88888650#TMSN.png( bytes ) 86690641#TMSN.png( bytes ) Notice of Opposition OWNEST.pdf(2194335 bytes )
Signature /Jonathan G. Morton/ Name Jonathan G. Morton Date 05/02/2020 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
Xie Binbin,
Opposer, Opposition No.
v. Serial No. 88/428,729 Mark: OWNEST Lai Guoheng, Filing Date: May 14, 2019 Publication Date: April 7, 2020 Applicant.
Commissioner for Trademarks P.O. Box 1451 Alexandria, Virginia 22313
NOTICE OF OPPOSITION
The Opposer, Xie Binbin, an individual of the People’s Republic of China, with an address of No. 37 Qiqiao, Yuanguang Village, Meitang Town, Puning, China 515342
(“Opposer”) files this Notice of Opposition against Lai Guoheng (“Applicant”) and believes that he would be damaged by the registration of the above-identified mark in International Class 3 and hereby opposes same, pursuant to 15 U.S.C. § 1063 and 37 C.F.R. § 2.104.
As grounds for opposition, it is alleged that:
1. Opposer, and Opposer’s companies “Guangzhoushi Oulishi Huazhuangpin Youxian
Gongsi” and “Guangzhou Yunhan Xiangfeng Network Technology Co., Ltd.”, see
attached evidence of ownership as Exhibit 1, are in the business of marketing and selling
concealers for skin, face, body; eye-shadow; lip gloss; lipsticks; liquid foundation (mizu-
oshiroi); massage oil; nail grooming products, namely, tips, glue, lacquer and glitter; nail
polish and other miscellaneous cosmetics and skin/nail care related merchandise under
the mark OWNEST on their Amazon account shop “Ownest Beauty USA” in the United
1 States, United Kingdom, France, Spain, Italy and China since at least as early as March
1, 2018, see attached Amazon ownership also as Exhibit 1.
2. Opposer’s company, Guangzhou Yunhan Xiangfeng Network Technology Co., Ltd.,
through its employee Wu Huaisheng, obtained a Chinese trademark registration no.
22242171 for “OWNEST” in Class 3 “mixture of dried petals and spices (spices);
toothpaste; essential oils; abrasives” which was filed on December 13, 2016 and was
subsequently registered on January 7, 2019, see attached as Exhibit 2.
3. Opposer’s company, Guangzhou Yunhan Xiangfeng Network Technology Co., Ltd., also
obtained U.S. trademark registration no. 4,922,284 for “OWNEST” in Class 9 “Air
quality measurement apparatus, namely, particle counters; Amplifiers; Bags adapted for
laptops; Batteries; Battery chargers; Camera mounts and supports; Cameras; Car video
recorders; Cases for mobile phones; Cell phone battery chargers for use in vehicles; Cell
phone straps; Chronographs for use as specialized time recording apparatuses; Computer
hardware and computer peripherals; Converters for electric plugs; Covers for electric
outlets; Display screen protectors for providing shade and privacy specially adapted to
electronic devices, namely, laptops, cell phones, personal digital assistants; Earphones;
Electric cables, wires, conductors and connection fittings therefor; Electric current
switches; Electric light switches; Electric power converters; Electrical pickups for use
with musical instruments; Eyeglass cases; Eyeglasses; Fitted plastic films known as
skins for covering and providing a scratch proof barrier or protection for electronic
devices, namely, MP3 players, mobile telephones, smart telephones, digital cameras,
global positioning systems and personal digital assistants; GPS navigation device;
Headphones; Lap-counting devices, namely, counters for use during sporting activities;
LED and HID light controls; Light systems comprising light sensors and switches;
Loudspeakers; Mousepads; Plastic molded support base specially adapted to prop up 2 laptop computers; Portable media players; Portable photography equipment, namely,
reflectors, tripods, light stands and supports and bags specially adapted for these goods;
Portable telephones; Protective covers and cases for cell phones, laptops and portable
media players; Radio transmitters and receivers for remote controls, radio controls;
Remotely-controlled sub-aquatic video camera containing a TV camera, transmitter,
receiver and microphone to record, detect, measure, survey and locate objects
underwater; Set-top boxes; Slide or photograph projection apparatus; Smart card readers;
Solar batteries; Sound recording apparatus; Spectacle frames; Sunglasses; Telematics
apparatus, namely, wireless Internet devices which provide telematic services and have a
cellular phone function; Telescopes; Video monitors; Wearable digital electronic devices
comprised primarily of software for viewing, sending and receiving texts, emails, data
and information from smart phones, tablet computers and portable computers and
display screens and also featuring a bracelet; Wireless cellular phone headsets; Wireless
communication devices for voice, data or image transmission; Wireless indoor and
outdoor speakers; Wireless transmitters and receivers” which was filed on July 12, 2015
and was subsequently registered on March 22, 2016 and claimed a first date of use in the
U.S. of February 22, 2015, see attached as Exhibit 3.
4. Opposer has also applied for a U.S. trademark serial no. 88888650 for “OWNEST” in
International Class 3 “Concealers for skin, face, body; Eye-shadow; Lip gloss; Lipsticks;
Liquid foundation (mizu-oshiroi); Massage oil; Nail grooming products, namely, tips,
glue, lacquer and glitter; Nail polish” which was filed on under basis 1A on April 27,
2020 and which claims a first use date in the U.S. of March 1, 2018, see attached as
Exhibit 4.
5. Commencing long before any date upon which Applicant can rely as a priority date,
Opposer and Opposer’s companies have used and are currently using Opposer's 3 OWNEST Mark in interstate commerce in the United States in connection with, but not
limited to, “concealers for skin, face, body; eye-shadow; lip gloss; lipsticks; liquid
foundation (mizu-oshiroi); massage oil; nail grooming products, namely, tips, glue,
lacquer and glitter; nail polish and other miscellaneous cosmetics and skin/nail care
related merchandise and the online retail promotion and sales of its own goods and
merchandise through Amazon’s ecommerce platform, see attached as Exhibit 5 samples
of Opposer’s goods using the OWNEST mark, archived screenshots of Opposer’s sales
of its goods utilizing the OWNEST mark in the U.S. dating back to November 5, 2018
on Amazon’s ecommerce platform.
6. Accordingly, Opposer's Mark has priority over the Applicant’s Mark because Opposer’s
use priority date predates the Applicant's filing date or any other date on which the
Applicant may rely for purposes of priority.
7. Opposer has invested a substantial amount of time, effort and money in promoting its
name and Opposer’s Mark. As a result, Opposer’s Mark has become closely and
uniquely identified and associated with Opposer and has come to represent significant
goodwill for Opposer.
8. Opposer continues to offer for sale and sell concealers for skin, face, body; eye-shadow;
lip gloss; lipsticks; liquid foundation (mizu-oshiroi); massage oil; nail grooming
products, namely, tips, glue, lacquer and glitter; nail polish and other miscellaneous
cosmetics and skin/nail care related merchandise bearing his OWNEST Mark to
customers in the United States through the Amazon ecommerce platform.
9. The OWNEST Mark was conceived by Opposer.
10. The OWNEST Mark is proprietary to Opposer in International Class 3 concealers for skin,
face, body; eye-shadow; lip gloss; lipsticks; liquid foundation (mizu-oshiroi); massage oil; nail
4 grooming products, namely, tips, glue, lacquer and glitter; nail polish and other miscellaneous
cosmetics and skin/nail care related goods.
11. No third-party has the right to use the OWNEST Mark in the United States in
International Class 3 for concealers for skin, face, body; eye-shadow; lip gloss; lipsticks;
liquid foundation (mizu-oshiroi); massage oil; nail grooming products, namely, tips,
glue, lacquer and glitter; nail polish and/or other miscellaneous cosmetics and skin/nail
care related merchandise or related goods without Opposer’s express authorization.
12. No third-party has the right to register the OWNEST Mark in International Class 3 for
concealers for skin, face, body; eye-shadow; lip gloss; lipsticks; liquid foundation (mizu-
oshiroi); massage oil; nail grooming products, namely, tips, glue, lacquer and glitter; nail
polish and other miscellaneous cosmetics and skin/nail care related goods in the United
States without Opposer’s express authorization.
13. Opposer has invested substantial funds in developing his OWNEST Mark and brand
used in connection with offering for sale of concealers for skin, face, body; eye-shadow;
lip gloss; lipsticks; liquid foundation (mizu-oshiroi); massage oil; nail grooming
products, namely, tips, glue, lacquer and glitter; nail polish and other miscellaneous
cosmetics and skin/nail care related goods to customers in the United States, at great cost
and expense to Opposer.
14. On May 14, 2019, Applicant caused to be filed Appl. No. 88428729 for OWNEST in
“Adhesives for affixing false eyelashes; Air fragrancing preparations; Cosmetics;
Ethereal oils; Eye-shadow; Eyebrow cosmetics; False eyelashes; Lavender oil; Lipstick;
Lipsticks; Make-up preparations; Nail care preparations; Phytocosmetic preparations;
Preparations for cleaning dentures; Skin whitening creams; Stain removers” in
International Class 3 (hereinafter the “‘Application”).
15. As part of its written declaration filed in connection with the 1A use based Application, 5 Applicant stated, under penalty of perjury, that:
(a) The signatory believes that the applicant is the owner of the trademark/service mark sought to be registered; (b) The mark is in use in commerce on or in connection with the goods/services in the application; (c) The specimen(s) shows the mark as used on or in connection with the goods/services in the application; and (d) To the best of the signatory's knowledge and belief, the facts recited in the application are accurate.
16. Applicant further represented to the USPTO, under penalty of perjury, that its first use
and first use anywhere of the OWNEST mark which is the subject of the Application
was March 10, 2019.
17. Opposer’s use of his OWNEST Mark for highly similar goods in Class 3 is prior to
any purported use by Applicant of its OWNEST Mark for goods in Class 3.
18. Upon information and belief, Applicant had full knowledge of Opposer’s priority
ownership rights in and to the OWNEST Mark prior to the date that Applicant filed the
Application on May 14, 2019.
19. Upon information and belief, Applicant knew that Opposer was offering for sale
concealers for skin, face, body; eye-shadow; lip gloss; lipsticks; liquid foundation (mizu-
oshiroi); massage oil; nail grooming products, namely, tips, glue, lacquer and glitter; nail
polish and other miscellaneous cosmetics and skin/nail care related goods bearing
Opposer’s OWNEST Mark to customers in the United States prior to the date that
Applicant filed the Application on May 14, 2019.
20. Upon information and belief, Applicant submitted a false or fraudulent specimen of
use of the OWNEST Mark in connection with the filing of the Application on May
14, 2019 which is attached hereto as Exhibit 6.
21. Upon information and belief, Applicant was not using its OWNEST Mark on or in
connection with any of the goods set forth in the Application as of March 10, 2019, its
6 alleged date of first use in commerce.
22. Upon information and belief, Applicant was not using its OWNEST Mark on or in
connection with all of the goods set forth in the Application as of March 10, 2019, its
alleged date of first use in commerce.
23. Upon information and belief, Applicant is currently not using its OWNEST Mark on or
in connection with all of the goods set forth in the Application.
24. At the time it filed the Application, Applicant knew that the material statements that it
made in support of the Application were false.
25. At the time it filed the Application, Applicant intended for the USPTO to rely upon
the material statements that it made in support of the Application.
26. Opposer was using its OWNEST Mark in commerce prior to any alleged use by
Applicant of Applicant’s OWNEST Mark.
27. Opposer’s common law priority rights in and to the OWNEST Mark are superior to
any purported rights claimed by Applicant in and to the name OWNEST or any
trademark that uses the name OWNEST in connection with concealers for skin, face,
body; eye-shadow; lip gloss; lipsticks; liquid foundation (mizu-oshiroi); massage oil;
nail grooming products, namely, tips, glue, lacquer and glitter; nail polish and other
miscellaneous cosmetics and skin/nail care related goods.
28. Applicant’s OWNEST mark is identical to Opposer’s OWNEST Mark.
29. The parties’ respective OWNEST Marks and applications contain identical or highly
similar goods.
30. The parties’ products offered for sale under their respective OWNEST Marks are sold
to the same class of purchasers.
31. The parties’ products offered for sale under their respective OWNEST Marks are
7 sold through the same channels of trade.
32. Applicant’s use of the name and mark “OWNEST” in connection with goods and
services in International Class 3 is likely to cause confusion with Opposer’s OWNEST
Mark used in connection with Opposer’s goods.
33. Applicant’s attempts to register the OWNEST Mark which is the subject of the
Application has caused, and will continue to cause irreparable harm, injury, and damage
to Opposer.
8 WHEREFORE, Opposer respectfully requests that Appl. No. 88/428,729 be denied registration and the judgment issue in favor of Opposer.
Respectfully submitted for Opposer, Xie Binbin
By: Jonathan G. Morton, Esq. Attorney for Opposer 1395 Brickell Drive Suite 900 Miami, Florida 33131 Tel: (305) 764-9179 [email protected]
Date: May 2, 2020 Enclosures: $400 Filing Fee (1 Class)
9
I HEREBY CERTIFY THAT THIS CORRESPONDENCE IS BEING FILED ELECTRONICALLY WITH THE UNITED STATES PATENT AND TRADEMARK OFFICE ON MAY 2, 2020.
By: Jonathan G. Morton, Esq. Attorney for Opposer 1395 Brickell Drive Suite 900 Miami, Florida 33131 Tel: (305) 764-9179 [email protected]
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