BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`uumumummmmmnummmmuu
`
`07-26-2002
`
`u.s. Pawn: & TMO1c/TM Mail Rcpt D1, 425
`OPPOSITION No.
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`
`BEAUTE PRESTIGE INTERNATIONAL,
`
`Oppo S e r ,
`
`vs.
`
`U.S. PERFUME HOUSE,
`
`INC.,
`
`App l i cant .
`
`NOTICE OF OPPOSITION
`
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`a French corporatiogfi WT
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`
`Beaute Prestige International,
`
`its principal place of business at 28/32 Avenue Victor Hugo,
`
`75116,
`
`Paris,
`
`France,
`
`believes that it will be damaged by the
`
`registration of the mark shown in Application Serial Number
`
`76/319,377 in International Class 3 and hereby opposes the
`
`07/30/B002 JHRRLEY
`
`0030?)? 76319.37?
`
`01 FC:377
`
`300.00 DP
`
`As grounds for the opposition it is alleged that:
`
`1. Applicant, U. S. Perfume House, Inc.,
`
`on information and
`
`belief,
`
`a New York corporation with an address at 5723 Second
`
`Avenue, Brooklyn, New York, seeks to register containers in
`
`the shape of a female torso for fragrances,
`
`namely, perfumes,
`
`as set forth in the above noted application.
`
`The application
`
`7034l2-I155
`
`
`
`
`
`ARLINGTON,VIRGINIA22202~34I7
`
`LAWOFFICES
`
`
`
`DENNISON,SCHULTZ8:DOUGHERTY
`
`
`612CRYSTAL
`
`
`
`
`
`SQUARE4I745JEFFERSONDAVISHIGHWAY
`
`
`
`uumumummmmmnummmmuu
`
`07-26-2002
`
`u.s. Pawn: & TMO1c/TM Mail Rcpt D1, 425
`OPPOSITION No.
`
`._.».
`
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`1
`
`BEAUTE PRESTIGE INTERNATIONAL,
`
`Oppo S e r ,
`
`vs.
`
`U.S. PERFUME HOUSE,
`
`INC.,
`
`App l i cant .
`
`NOTICE OF OPPOSITION
`
`3
`:33:
`AD
`v;§»"3:
`E,
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`6333
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`fr‘.
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`a French corporatiogfi WT
`
`-U
`
`ri;
`
`Beaute Prestige International,
`
`its principal place of business at 28/32 Avenue Victor Hugo,
`
`75116,
`
`Paris,
`
`France,
`
`believes that it will be damaged by the
`
`registration of the mark shown in Application Serial Number
`
`76/319,377 in International Class 3 and hereby opposes the
`
`07/30/B002 JHRRLEY
`
`0030?)? 76319.37?
`
`01 FC:377
`
`300.00 DP
`
`As grounds for the opposition it is alleged that:
`
`1. Applicant, U. S. Perfume House, Inc.,
`
`on information and
`
`belief,
`
`a New York corporation with an address at 5723 Second
`
`Avenue, Brooklyn, New York, seeks to register containers in
`
`the shape of a female torso for fragrances,
`
`namely, perfumes,
`
`as set forth in the above noted application.
`
`The application
`
`7034l2-I155
`
`
`
`
`
`ARLINGTON,VIRGINIA22202~34I7
`
`LAWOFFICES
`
`
`
`DENNISON,SCHULTZ8:DOUGHERTY
`
`
`612CRYSTAL
`
`
`
`
`
`SQUARE4I745JEFFERSONDAVISHIGHWAY
`
`
`
`was filed on October 1, 2001 based upon alleged use in
`
`commerce of April 6, 2001. The application was published on
`
`May 21, 2002 in the Official Gazette of the United States
`
`Patent and Trademark Office. Opposer has obtained an
`
`extension of time until August 19, 2002 in which to file this
`
`Notice of Opposition.
`
`2. Opposer is well known in the fragrance and cosmetics
`
`industry and has been engaged in the manufacture and marketing
`
`of its fragrance products for many years in the United States
`
`as well as throughout the world.
`
`3. Opposer has used it's well-recognized marks, containers in
`
`the shape of male and female torsos for fragrance and beauty
`
`products, since a date long prior to Applicant's alleged date
`
`of first use in commerce and prior to it's application for
`
`registration in the U.S. Patent and Trademark Office,
`
`4. Opposer’s marks are the subjects of U.S. Trademark
`
`Registration Numbers 2,141,962; 2,078,555; and 2,080,775. True
`
`and correct copies of these registration certificates are
`
`attached as Exhibits A, B and C, respectively. Opposer will
`
`rely on these registrations which are in full force and effect
`
`and a Notice of Reliance will be filed during Opposer’s
`
`7034:21155
`
`
`
`
`
`ARLINGTON,VIRGINIA22202-3417
`
`LAworrucas
`
`
`
`DENNISON,SCHULTZ8:DOUGHERTY
`
`
`6:2CRYSTAL
`
`
`
`
`
`SQUARE41745JEFFERSONDAVISHIGHWAY
`
`
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`LAWOFFICES
`
`
`
`DENNISON,SCHULTZ8:DOUGHERTY
`
`
`
`SQUARE4I745JEFFERSONDAVISHIGHWAY
`
`
`6I2CRYSTAL
`
`
`
`testimony period pursuant to Trademark Rule of Practice
`
`2.l22(d)(2).
`
`5. Opposer is also the owner of international copyrights
`
`covering it's fragrance bottle designs in the shape of a
`
`partial female torso.
`
`6. Opposer has used the aforesaid marks in commerce in the
`
`United States continuously and without interruption since at
`
`least as early as January 1, 1995 for the female torso
`
`designs.
`
`7.
`
`By virtue of its efforts and the expenditure of
`
`considerable sums for the advertising and promotion of its
`
`distinctive product containers as well as extensive sales of
`
`the product, Opposer has gained for its above identified marks
`
`an exceedingly valuable reputation and goodwill.
`
`8. Applicant’s mark which is also a container in the shape of
`
`a female torso so closely mimics those of Opposer and is so
`
`similar to Opposer’s marks as to be likely to cause confusion,
`
`mistake or deception as to the source of the fragrance
`
`products, especially because Applicant's mark is sought to be
`
`
`
`703412-!I55
`
`
`
`
`
`ARLINGTON,VIRGINIA22202~34I7
`
`
`
`01
`
`LAWOFFICES
`
`
`
`DENNISON,SCHULTZ8:DOUGHERTY
`
`used in conjunction with goods that are identical to or very
`
`closely related to the goods of Opposer.
`
`9.
`
`If Applicant is permitted to use and register the mark
`
`herein opposed for the goods specified in it's application,
`
`confusion in the trade and for the consumer will likely
`
`result, causing damage and injury to the Opposer.
`
`Persons
`
`familiar with Opposer’s distinctive marks would be likely to
`
`purchase Applicant's products in the mistaken belief that such
`
`goods originate with Opposer. Any such confusion will
`
`inevitably result in loss of sales to Opposer. Moreover, any
`
`objection or fault found with Applicant's products sold under
`
`the mark herein opposed would necessarily reflect upon and
`
`seriously injure the reputation which Opposer has established
`
`for its products offered under its marks and thereby erode the
`
`valuable goodwill established by Opposer in its marks.
`
`10. Registration of the mark at issue herein to Applicant will
`
`be a source of damage and injury to Opposer.
`
`WHEREFORE, Opposer prays that Application Serial Number
`
`76/319,377 be rejected, and that registration of the mark
`
`shown therein for the goods set forth therein be refused and
`
`denied.
`
`703412-1155
`
`
`
`
`
`ARLINGTON,vmemm22202~3AI7
`
`
`612CRYSTAL
`
`
`
`
`
`SQUARE42745JEFFERSONDAVISHIGHWAY
`
`
`
`¢\
`
`LAWOFFICES
`
`
`
`DENNISON,SCHULTZ8:DOUGHERTY
`
`
`
`512CRYSTALSQUARE4
`
`A duplicate copy of this Notice of Opposition is
`
`enclosed. Also,
`
`the fee of $300.00 required by Trademark Rule
`
`of Practice 2.6 (a)(l7)
`
`is enclosed.
`
`Date:
`
`fa
`
`fit 2 q'2ao&
`
`Respectfully submitted,
`
`By:
`
`Donald L. Dennison
`
`Dennison, Schultz
`
`& Dougherty
`Attorneys for Opposer
`1745 Jefferson Davis Highway
`Arlington, VA 22202
`(703)412-1155
`
`7034l2-I155
`
`
`
`
`
`ARLINGTON,VIRGINIA22202-3417
`
`
`
`I745JEFFERSONDAVISH|GHWAY
`
`
`
`
`
`
`
`
`
`Int. CL: 3
`
`Prior U.S. CIs.: 1, 4, 6, 50, 51 and 52
`
`Reg. No. 2,141,962
`
`United States Patent and Trademark Office
`Registered Mar. 10, I998
`
`TRADEMARK
`PRINCIPAL REGISTER
`
`
`
`PRESTIGE
`BEAUTE
`(FRANCE CORPORATION)
`18, AVENUE MATIGNON
`75008 PARIS. FRANCE
`
`INTERNATIONAL
`
`FOR: SKIN SOAPS, PERFUMES. ESSENTIAL
`OILS FOR PERSONAL USE, HAIR LOTIONS,
`AND DENTIFRICES;
`AND COSMETICS,
`NAMEI.Y,»SKIN CREAMS. BODY GELS, FACE
`AND BODY POWDERS, AND SKIN MILKS, IN
`CLASS 3 (U.S. CLS. I. 4, 6. 50, 5| AND 52).
`
`OWNER OF FRANCE REG. NO. 95587225,
`DATED 9-7-1995, EXPIRES 9-7-2005.
`THE DRAWING IS LINED FOR THE COLOR
`BLUE.
`THE MARK CONSISTS OF THE THREE-DL
`MENSIONAL SHAPE OF THE CONTAINER
`FOR THE GOODS.
`
`SER. NO. 75-l46,244, FILED 8—6-I996.
`
`PAULA MAYS, EXAMINING ATTORNEY
`
`E)(h’IBI7~
`
`
`
`
`
`Int. CL: 3
`
`Reg. No. 2,078,555
`Prior U.S. C1s.: 1, 4, 6, S0, 51 and 52
`United States Patent and Trademark Office mmma July 15,1997
`
`.
`
`TRADEMARK
`PRINCIPAL REGISTER
`
`
`
`PRESTIGE
`BEAUTE
`(FRANCE CORPORATION)
`ISJKVENUE MATIGNON
`‘HO08 PAR!5. FRANCE.
`
`INTERNATIONAL
`
`I-I-1995;
`
`FIRST USE
`I-14995.
`THE STIPPLING IS FOR SHADING PUR-
`POSES AND TO REPRESENT A FROSTED AP-
`PEARANCE.
`-
`
`IN COMMERCE
`
`FOR: WOMEN'S FRAGRANCE PRODUCTS.
`NAMELY. PERFUME AND EAU DE -'I‘0!-
`LETTE. IN CLASS 3 (U5. CLS. 1, 4, 6, 50. S1
`AND 52).
`
`SER. NO. 75-022.907. FILED ll—20-I995.
`'
`PAULA MAYS, EXAMINING ATTORNEY
`
`f~7( ///3157+ B
`
`2f is1
`
`1 i9I
`
`
`
`K Int. Cl.: 3
`Prior U.S. Cls.: 1, 4, 6, 50, 51 and 52
`
`Reg. No. 2,080,775
`
`United States Patent and Trademark Office
`
`Registered July 22, 1997
`
`TRADEMARK
`
`PRINCIPAL REGISTER
`
`
`
`PRESTIGE
`BEAUTE
`(FRANCE CORPORATION)
`18. AVENUE MATIGNON
`75008 PARIS. FRANCE
`
`INTERNATIONAL
`
`USE.
`
`%— 14995;
`
`FIRST
`IN COMMERCE
`.
`I-vi-1995.
`THE LXNING IN THE DRAWING IS FOR
`SHADING PURPOSES ONLY AND IS NOT IN-
`TENDED TO REPRESENT COLOR.
`
`FOR: WOMEN'S FRAGRANCE PRODUCTS.
`NAMELY. PERFUME AND EAU DE TOI-
`LETTE. IN CLASS 3 (US. (31.3.
`I. 4, 6. 50, SI
`AND 52).
`
`sea. NO. 7s—o22,923. F1u2t>'u_2o—1995.
`
`PAULA MAYS. axammxuo ATTORNEY
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