IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`We
`
`2 s,
`‘
`
`Q
`\‘
`
`,
`
`,
`
`..
`"3
`.9
`
`In the matter of Application Serial No. 75/790,160
`Published in the Official Gazette on May 8, 2001
`
`)
`)
`)
`)
`)
`
`) )
`
`ACCANTIA HEALTH & BEAUTY
`LIMITED,
`
`Opposer,
`
`v.
`
`Opposition No.
`
`-s--
`,,_-,--,---;
`Hl|||||l||||||l||||l||||||ll|l|||l|||||||ll||l||l
`
`ISSIMO INTERNATIONAL, LLC,
`
`)
`)
`o1-o2-2oo2
`)
`Applicant
` % US. Patents; TMOfc/TM Mall Ficpt Dt. IP61
`
`NOTICE OF OPPOSITION
`
`Accantia Health & Beauty Limited (“Accantia”), located and doing business at Alum
`
`Rock Road, Birmingham, B83DZ, United Kingdom, believes that it will be damaged by
`
`registration of the mark shown in Application Serial No. 75/790,160 and hereby opposes the
`
`same. A description of applicant’s mark is as follows:
`
`Mark:
`
`SIMPLE GLAMOUR
`
`Serial No.:
`
`75/790,160
`
`Filed:
`
`September 24, 1999
`
`Published:
`
`May 8, 2001
`
`Alleged Use:
`
`May 10, 1999
`
`01/07/2002 KGIBBDHS 00000026 75790160 Class:
`01 FC:377
`300.00 OP
`
`20056963.!
`01/02/02 3:01 PM
`
`3
`
`1
`
`NOTICE OF OPPOSITION
`
`
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`We
`
`2 s,
`‘
`
`Q
`\‘
`
`,
`
`,
`
`..
`"3
`.9
`
`In the matter of Application Serial No. 75/790,160
`Published in the Official Gazette on May 8, 2001
`
`)
`)
`)
`)
`)
`
`) )
`
`ACCANTIA HEALTH & BEAUTY
`LIMITED,
`
`Opposer,
`
`v.
`
`Opposition No.
`
`-s--
`,,_-,--,---;
`Hl|||||l||||||l||||l||||||ll|l|||l|||||||ll||l||l
`
`ISSIMO INTERNATIONAL, LLC,
`
`)
`)
`o1-o2-2oo2
`)
`Applicant
` % US. Patents; TMOfc/TM Mall Ficpt Dt. IP61
`
`NOTICE OF OPPOSITION
`
`Accantia Health & Beauty Limited (“Accantia”), located and doing business at Alum
`
`Rock Road, Birmingham, B83DZ, United Kingdom, believes that it will be damaged by
`
`registration of the mark shown in Application Serial No. 75/790,160 and hereby opposes the
`
`same. A description of applicant’s mark is as follows:
`
`Mark:
`
`SIMPLE GLAMOUR
`
`Serial No.:
`
`75/790,160
`
`Filed:
`
`September 24, 1999
`
`Published:
`
`May 8, 2001
`
`Alleged Use:
`
`May 10, 1999
`
`01/07/2002 KGIBBDHS 00000026 75790160 Class:
`01 FC:377
`300.00 OP
`
`20056963.!
`01/02/02 3:01 PM
`
`3
`
`1
`
`NOTICE OF OPPOSITION
`
`
`
`
`
`Goods:
`
`HAIR CARE PREPARATIONS; SKIN CARE
`
`PREPARATIONS, NAMELY, SKIN
`MOISTURIZERS, CLEANSING LOTION, SKIN
`CREAM, SKIN MASKS, SKIN TEXTURIZERS,
`SKIN TONERS
`
`As grounds for its opposition, Accantia alleges as follows:
`
`1.
`
`Applicant Issimo International, LLC (“Issimo”) seeks to register a mark
`
`consisting of the words “SIMPLE GLAMOUR” for “hair care preparations; skin care
`
`preparations, namely, skin moisturizers, cleansing lotion, skin cream, skin masks, skin
`
`texturizers, skin toners” in International Class 3 (the “SIMPLE GLAMOUR Mark”) as evidence
`
`by the publication of the SIMPLE GLAMOUR Mark in the Ojficial Gazette.
`
`2.
`
`Since at least as early as the 1960’s, Accantia has used the trademark SIMPLE in
`
`connection with a wide variety of health and beauty products in the United States. Indeed,
`
`Accantia is the owner of two (2) United States Trademark Registrations Nos. 1,599,108
`
`(registered on June 5, 1990) and 1,471,864 (registered January 12, 1988) for the mark SIMPLE
`
`in International Class 3 for use in connection with non—medicated skin and hair preparations,
`
`talcum powder, hand and body soaps, and antiperspirants, and had used the mark in interstate
`
`commerce since at least as early as July 1966 (the “SIMPLE Mark”). True and correct copies of
`
`US Trademark Registration Nos. 1,599,108 and 1,471,864 are attached hereto as Exhibit A.
`
`3.
`
`Said registrations are valid and fully subsisting and are conclusive evidence of
`
`Accantia’s exclusive rights to use the SIMPLE Mark in commerce in connection with the goods
`
`specified in the registration.
`
`4.
`
`There is no issue as to priority. Issimo’s application, which was filed on
`
`September 24, 1999, indicates that Issimo first used the SIMPLE GLAMOUR Mark on May 10,
`
`1999. As set forth in Registration Nos. 1,599,108 and 1,471,864, Accantia has been using its
`
`200569611
`01/02/02 3:01 PM
`
`2
`
`NOTICE OF OPPOSITION
`
`
`
`
`
`SIMPLE Mark in interstate commerce since at least as early as July 1966. Thus, the date of first
`
`use of Accantia’s SIMPLE Mark long precedes the date of any first use of Issimo’s SIMPLE
`
`GLAMOUR Mark.
`
`5.
`
`By virtue of Accantia’s efforts and expenditure of considerable sums for
`
`advertising and promotional activities, and the excellence of its goods, Accantia has developed
`
`an exceedingly valuable goodwill in its SIMPLE Mark. Indeed, the SIMPLE Mark is distinctive
`
`and famous among the relevant consuming public.
`
`6.
`
`The SIMPLE GLAMOUR Mark appears confusingly similar to the SIMPLE
`
`Mark in that both Issimo’s mark and Accantia’s mark contain the identical word “SIMPLE.”
`
`7.
`
`Based on the above, registration of the SIMPLE GLAMOUR Mark is likely to
`
`cause confusion, mistake or deception as to the source of Issimo’s goods offered under its
`
`confusingly similar SIMPLE GLAMOUR Mark, particularly since Issimo’s goods are identical
`
`to Accantia’s goods — skin and hair preparations in International Class 3 — and are directly
`
`competitive with Accantia.
`
`8.
`
`Any such confusion will damage and injure Accantia in that persons familiar with
`
`Accantia’s mark may be likely to buy Issimo’s goods as and for a product made and sold by
`
`Accantia resulting in loss of sales to Accantia. Further, in View of Applicant’s confusingly
`
`similar mark on identical goods, consumers may mistakenly believe that there is a connection
`
`between Applicant’s goods and Accantia when in fact there is not.
`
`9.
`
`Any defect, objection, or fault found with Issimo’s hair and skin care preparations
`
`sold under its SIMPLE GLAMOUR Mark would necessarily reflect upon and seriously injure
`
`and dilute the reputation that Accantia has established for its hair and skin care preparations sold
`
`under its SIMPLE Mark.
`
`200569611
`01/02/02 3:01 PM
`
`3
`
`NOTICE OF OPPOSITION
`
`
`
`
`'3‘
`
`10.
`
`. Moreover, registration by Issirno of the SIMPLE, GLAMOUR Mark will reduce
`
`the goodwill and value associated with Accantia’s SIMPLE Mark and dilute the distinctive
`
`quality of Accantia’s mark.
`
`11.
`
`If Issirno is granted the registration sought in Application Serial No. 7 5/790,160,
`
`it would thereby obtain at least a primafacie exclusive right to use its SIMPLE GLAMOUR
`
`Mark. Such a registration would be a further source of damage and injury to Accantia.
`
`WHEREFORE, Accantia prays that Application Serial No. 75/790,160 be rejected, and
`
`that the mark therein sought for the goods identified in International Class 3 be denied and
`
`refused.
`
`Accantia hereby gives notice under 37 C.F.R. § 2.122(d) that after the hearing and in any
`
`appeal on this Opposition proceeding, it will rely on its registrations, copies of which are
`
`attached to this Notice of Opposition as evidence in support of this Notice of Opposition.
`
`A duplicate copy of this Notice of Opposition and a check in the amount of $300
`
`covering the fee required under 37 C.F.R. § 2.1(a)(17) are enclosed herewith.
`
`DATED: January 2, 2002
`
`Respectfiilly submitted,
`
`
`
`san E. Hollander, Esq.
`Kristin R. Allen, Esq.
`Manatt, Phelps & Phillips, LLP
`1001 Page Mill Road, Bldg. 2
`Palo Alto, CA 94304
`(650) 812-1300 (Phone)
`(650) 213-0260 (Fax)
`
`Attorneys for Opposer
`Accantia Health & Beauty Limited
`
`200569631
`01/02/02 3:01 PM
`
`4
`
`NOTICE OF OPPOSITION
`
`
`
`
`
`CERTIFICATE OF EXPRESS MAILING
`
`Express Mail Label Number: EL 891737038 Us
`Date of Deposit: January 2, 2002
`
`I hereby certify that this notice of opposition is being deposited with the United States
`Postal Service “Express Mail Post Office to Addressee” under 37 CFR 1.10 on the date indicated
`above and is addressed to Assistant Commissioner for Trademarks, Box TTAB - Fee, 2900
`
`Crystal Drive, Arlington, VA 22202-3513.
`
`Signature:
`Name:
`
`5353
`Jennifer Perez
`
`200569611
`01/02/02 3:03 PM
`
`5
`
`NOTICE OF OPPOSITION
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
