throbber
Paul, Hastings, Janofsky & Walker LLP
`75 East 55th Street, New York, New York 10022-3205
`telephone 212-318-6000 I facsimile 212-319-4090/ internet www.paulhastings.com
`
`Paul Hastings
`
`Atlanta
`Beijing
`Hong Kong
`London
`Los Angeles
`New York
`Orange County
`San Diego
`San Francisco
`Stamford
`Tokyo
`Washington, D.C.
`
`(212) 318-6463
`jennifershmulewitz@paulhastings.com
`
`October 31, 2003
`
`VIA EXPRESS MAIL
`
`Commissioner for Trademarks
`
`2900 Crystal Drive
`Arlington, VA 22202-3514
`Attn: TTAB
`
`Re: Opporition N0. 97/ 756,843 (XHADES EQ 2'9‘ Deszgn)
`
`Dear Sir/Madam:
`
`29172.00051
`
`,__
`
`l|||||lll|||llililllillllllllllllllllllliliili N D
`
`10-31-2003
`U.S. Patent & TMOfc/TM Mail Hcpt Dt. #78
`
`Transmitted herewith is Applicant’s Motion To Amend Its Answer And For Judgment
`On The Pleadings, the supporting Memorandum of Law, App1icant’s proposed Amended
`Answer and the Declaration of Robert L. Sherman for the above—referenced opposition
`proceeding.
`
`Very truly yours,
`
`2/
`
`]e nifer Shmulewitz
`for PAUL, HASTINGS, JANOFSKY & WALKER LLP
`
`Enclosures
`
`cc:
`
`James Cirilano, Esq.
`Lisa M. Gigliotti, Esq.
`Robert L. Sherman, Esq.
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRLAL AND APPEAL BOARD
`
`
`
`Express Mail label number: 2!
`I hereby certify that this correspondence is being
`deposited with the United States Postal Service
`
`
`"Express Mail Post Office To Addressee" service in an
`
`envelope addressed to:
`BOX TTAB
`
`Commissioner for Trademarks
`
`
`2900 Crystal Drive
`
`Arlington, VA 22202-3514
`
`
`
`Opposition No. 91/156,843
`
`WWWWWWWWWW
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`1 0-31-2003
`U.S. Patent & TMOfc/TM Mail Rcpt Dt. #78
`
`In the Matter of Application Serial No. 75/057,432
`Published in the Official Gazette on January 14, 2003
`For the Mark: SHADES EQ & Design
`
`)
`
`) )
`
`) )
`
`) )
`
`) )
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`Jean Alexander Cosmetics, Inc.,
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`Opposer,
`
`V.
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`L’Oréal USA, Inc.,
`
`)
`Applicant.
`Z____.;.[_;__>
`
`APPLICANT’S MOTION TO AMEND ITS
`
`ANSWER AND FOR JUDGMENT ON THE PLEADINGS
`
`Pursuant to T.B.M.P. §§ 504 and 507, Applicant L’Oréal USA Creative, Inc.
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`(“L’Oréal”) hereby moves the Trademark Trial and Appeal Board for leave to amend its
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`answer to add the affinnative defense ofjudicial estoppel and for judgment on the
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`pleadings. In support, L’Oréal encloses its Memorandum of Law, proposed Amended
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`Answer and Declaration of Robert L. Sherman with exhibits. In accordance with 37
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`C.F.R. § 2.127(d), L’Oréa1 respectfully requests that the discovery and testimony periods
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`be suspended pending the outcome of the subject motion.
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`L’Oréa1 further requests that it be substituted as party to this proceeding for
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`L’Oréa1 USA, Inc. and that the caption be amended to reflect the change. On October 1,
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`NY55/319816.]
`
`

`
`
`
`2002, L’Oréa1 USA, Inc. assigned Application Serial No. 75/057,432 to L’Oréal USA
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`Creative, Inc. The assignment has been duly recorded at reel/frame 2606/0990.
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`Dated: October 31, 2003
`
`Respectfully submitted,
`
`PAUL, HASTINGS, JANOFSKY
`&
`LKER LLP
`
`By:
`
`$
`
`Robert L. Sherman
`
`Jennifer Shmulewitz
`
`Attorneys for Applicant
`75 E. 55th Street
`
`New York, New York 10022
`212-318-6000
`
`NY55/319816.]
`
`

`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of Applicant’s: (1) Motion To
`
`Amend Its Answer And For Judgment On The Pleadings; (2) Memorandum In Support
`Of Amending Its Answer And For Judgment On The Pleadings; (3) Amended Answer;
`and (4) Declaration of Robert L. Sherman have been served upon James Cirilano, Esq.,
`Cirilano & Associates, 722 Broadway Avenue, McKees Rocks, PA 15136, the address
`designated for that purpose, by depositing a true copy of the same with the United States
`Postal Service as First-Class Mail on October 3‘
`, 2003.
`
`
`
`Jenni
`
`
`rShmu1ewitz
`
`V
`\J
`
`NY55/3|98I6.1
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TIUXDEMARK TRLAL AND APPEAL BOARD
`
`'
`:
`9 99 -
`cl:/¢|aarivlf'y?Ffatqhlgiirrespondence is being
`9§f::;:d“gti?;2:tlg‘f%:g $ga;fd5df::;:;§:;"r:z§e in an
`envelope addressed to:
`Commissi|:i1)c:(rl|o‘|t’l$ademarks
`2900 Crystal Drive
`- Iington, VA 22202-351
`
`
`
`.
`.
`.
`In the Matter Of Application SC1’1al NO. 75/057,432
`Published in the Official Gazette on Januaiy 14, 2003
`For the Mark: SHADES EQ & Design
`
`)
`)
`)
`
`) )
`
`) )
`
`,
`Jean Alexander Cosmetics, Inc.,
`
`Opposer,
`
`V.
`
`L’ Oréal USA, Inc.,
`
`)
`)
`_
`)
`Applicant.
`:_:_—_—————_:)
`
`Opposition No. 91/15,6_843D.___ _» ! —- e
`l|||||||l|l|||||||||||Illll||||l|||||||l||||||lI|l
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`10-31-2003
`U.S. Patent & TMOfcITM Mail Rcpt Dt. #78
`
`APPLICANT’S MEMORANDUM IN SUPPORT OF AMENDING,
`ITS ANSWER AND FOR JUDGMENT ON THE PLEADINGS
`
`Preliminary Statement
`
`Applicant L’Oréal USA Creative, Inc. (“L’Oréal”) hereby moves for leave to
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`amend its answer to add the affirmative defense ofjudicial estoppel and for judgment on
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`the pleadings. Jean Alexander Cosmetics, Inc. (“Jean Alexander”) is judicially estoppedl
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`from arguing that there is a likelihood of confusion between its EQ SYSTEM and design
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`mark and L’Oréal’s SHADES EQ and design mark, since it successfully argued to the
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`contrary in Cancellation No. 26,649. In that proceeding, Jean Alexander successfully
`
`defended the validity of its registration by denying that the marks are confusingly similar.
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`1
`
`Judicial estoppel applies to administrative proceedings. See Data General Corp. v.
`Johnson, 78 F.3d 1556 (Fed. Cir. 1996).
`
`NY55/3135772
`
`

`
`The Trademark Trial and Appeal Board (the “Board”) agreed and dismissed the
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`cancellation proceeding.
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`Now, more than five years after the commencement of that earlier proceeding and
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`more than 18 months after the Board decided in Jean Alexander’s favor, Jean Alexander
`
`asks this Board to find that there is a likelihood of confiision between the same marks.
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`Jean Alexander’s about-face is an affront to the integrity of the Board, its resources and
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`the finality of its decisions. Its chameleon-like claim should be dismissed.
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`Background
`
`On May 13, 2003, Jean Alexander filed the subject notice, relying on Section 2(d)
`
`of the Trademark Act, opposing registration of Application Serial No. 75/057,432 for
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`L'Oréal's mark SHADES EQ and Design for “hair care products, namely shampoos, and
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`hair color which are sold to and by professional hair dressers, stylists and salons” in
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`International Class 3 and “swatch rings containing sample hair pieces of various colors”
`
`in International Class 26 (the “SHADES EQ Mark” or the “Application”). Jean
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`Alexander, the owner of Registration No. 1,790,050 for the mark EQ SYSTEM and
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`Design for “hair care preparations; namely, shampoo, conditioner, styling lotion,
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`permanent wave, hair dressing” in International Class 3 (the “EQ SYSTEM mark” or the
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`“Registration”), now alleges that L’Orea1’s SHADES EQ Mark so resembles its EQ
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`SYSTEM Mark “as to be likely, when used with the Goods, to cause confusion, or to
`
`cause mistake, or to deceive.” Notice of Opposition at 1] 5. Five years ago, however,
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`Jean Alexander took exactly the opposite position when defending its Registration in a
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`NY55/3135772
`
`

`
`cancellation proceeding brought by L’Oréal’s predecessor, Cosmair, Inc. (“Cosmair”).2
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`In that proceeding, Jean Alexander argued, and the Board held, that there is no likelihood
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`of confusion between the marks.
`
`The Prior Proceeding
`
`On August 15, 1997, after Cosmair’s Application was refused registration because
`
`of Jean Alexander’s Registration, Cosmair petitioned to cancel Registration No.
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`1,790,050 on the grounds of prior use and the existence of a likelihood of confusion
`
`between the marks under Section 2(d) of the Trademark Act (the “Cancellation
`
`Proceeding”). A copy of the petition from the Cancellation Proceeding is attached as
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`Exhibit A to the Declaration of Robert L. Sherman (the “Sherman Declaration”),
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`submitted herewith, and is hereinafter referred to as the “Petition.” In the Petition,
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`Cosmair alleged that its use of the SHADES EQ Mark was prior to Jean Alexander’s use
`
`of the EQ SYSTEM Mark, since it began using the EQ SYSTEM in 1988 in connection
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`with goods in International Class 3 and on related merchandise} and Jean Alexander first
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`used the EQ SYSTEM Mark on July 5, 1990. Petition MI 4-5. Cosmair further alleged
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`that the marks were likely to be confused. Id. at 111] 6-9.
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`Cosmair, Inc. changed its name to L’Oréal USA, Inc. on June 21, 2000. The
`certificate of name change has been duly recorded at reel/frame 2429/0352. On
`October 1, 2002, L’Oréal USA, Inc. assigned Application Serial No. 75/057,432 to
`L’Oréal USA Creative, Inc. The assignment has been duly recorded at reel/frame
`2606/0990.
`
`Cosmair began using the original version of its SHADES EQ Mark in 1988. In or
`about 1992, it adopted a modernized version of its mark, which is the one that is the
`subject of the Application.
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`NY55/3135772
`
`

`
`In its Answer to the Petition, although Jean Alexander admitted it first used the
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`EQ SYSTEM Mark in connection with goods in International Class 3 no later than July 5,
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`1990, it repeatedly denied that there was a likelihood of confusion between the marks:
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`Registrant denies that the registered mark is confusingly similar to Petitioner’s
`mark, SHADES EQ and design, as to be likely to cause confusion. Jean
`Alexander’s Answer, Exhibit B to the Sherman Decl., at 11 6
`
`Third Affirmative Defense, No Likelihood of Confusion: Use of the mark “EQ
`SYSTEM and design” in connection with Registrant’s Goods by Registrant is not
`likely to cause confusion or to cause mistake or to deceive within the meaning of
`15 U.S.C. Section l052(d). Id. at 1] 12.
`
`On November 9, 2001, the Board agreed with Jean Alexander. After finding that
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`Cosmair had established priority for its original SHADES EQ and design mark, the Board
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`then held “[a]fter considering all the evidence, we come to the conclusion that there is no
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`likelihood of confusion between respondent’s mark and petitioner’s original and
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`modernized marks.” Cosmair, Inc. v. Jean Alexander Cosmetics, Inc., 2001 WL 1457589
`
`at * 7 (T.T.A.B. Nov. 9, 2001). A copy of the opinion is attached as Exhibit C to the
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`Sherman Declaration.
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`In reaching its conclusion that there was no likelihood of confusion, the Board
`
`acknowledged admissions by the parties’ representatives that confusion was not likely.
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`When asked during a deposition whether Jean Alexander’s logo and Cosmair’s
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`modernized logo looked different, Jean Alexander’s representative replied, “it’s distinctly
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`different.” Id. at *6. Moreover, although the parties had been using their respective
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`marks on related goods for more than six years, neither party testified that there were any
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`instances of actual confusion. Id. at *7.
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`NY55/3135772
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`

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`Specifically, the Board found that “[w]hile the marks are somewhat similar, they
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`also have differences in sound, appearance, meaning and commercial impression”, “the
`979
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`only point of similarity being the letters ‘EQ,
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`a recognized abbreviation for “equal,”
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`“equation,” or “equivalent.” Id. at *4. The Board found that Cosmair’s suggestive and
`99 6‘
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`“common” use of “EQ,
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`to suggest an equalizing or equilibrium effect the product
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`would have on hair,” “creates a different meaning when applied to the words ‘shades’
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`and ‘systems,”’ since “[o]ne suggests color shades that are equalized when applied to hair
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`and the other suggests a system that keeps hair in equilibrium with the right balance of
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`hair care products.” Id. Thus, the Board concluded that “[w]hile we find that the marks
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`contain the same two letters, ‘EQ,’ they have significant differences in sound,
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`appearance, meaning and commercial impression.” Id.
`
`Now, more than 1 years after the Cancellation Proceeding was commenced and
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`more than 18 months after obtaining a judgment in its favor, Jean Alexander asks this
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`Board to revisit the same issues on which the parties and the Board expended significant
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`resources, utterly to ignore the prior decision and to come to an opposite conclusion.
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`Notwithstanding its success the first time around, Jean Alexander now asserts an
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`inconsistent, indeed contrary, position -- that there is a likelihood of confusion between
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`the marks. The judicial system, including administrative proceedings and this Board, do
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`not allow a litigant in the position of Jean Alexander to play so fast and loose. In order to
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`maintain the integrity of this Board, Jean Alexander must be held to its earlier position
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`lest this proceeding be turned into a mockery.
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`NYSS/3|3577.2
`
`

`
`ARGUMENT
`
`A. The Board Should Grant L’Oréal Leave to Amend its Answer to Add
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`Judicial Estoppel as an Affirmative Defense.
`
`Amendments to pleadings in inter partes proceedings before the Board are
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`governed by Federal Rules of Civil Procedure, Rule 15(a), which provides that leave to
`
`amend “shall be freely given when justice so requires.” Fed.R.Civ.P. l5(a); TMBP §
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`507.01. Absent a showing of undue prejudice to the non-moving party, the Board freely
`
`grants leave to amend the pleadings. Focus 21 Int 7 Inc. v. Pola Kasei Kogyo Kabushiki
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`Kaisha, 22 U.S.P.Q.2d 1316, 1318 (T.T.A.B. 1992) (“Under Fed. R. Civ. P. 15(a) leave
`
`to amend shall be freely given when justice so requires and accordingly the Board
`
`liberally grants leave to amend pleadings when the other party will not be prejudiced
`
`thereby.”); Microsoft Corp. v. Qantel Bus. Sys. Inc., 16 U.S.P.Q.2d 1732 (T.T.A.B. 1990)
`
`(acknowledging that “the policy of granting leave is to be a liberal one”).
`
`In deciding the motion for leave to amend, the Board should consider: (1) whether
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`there is any undue prejudice to the non-movant; and (2) whether the amendment is legally
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`sufficient. Polaris Industries, Inc. v. DC Comics, 2000 WL 3321170 at *1, Opposition
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`No. 108,934 (T.T.A.B. 2000).
`
`Here, there is no conceivable prejudice to Jean Alexander in allowing L’Oréal to
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`add judicial estoppel as an affirmative defense. Jean Alexander, as a party to the
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`Cancellation Proceeding, knew not only of that decision’s relevance to the present
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`proceeding, but also of L’Oréal’s likelihood of relying on that decision in defending the
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`current opposition proceeding since L’Oréal referred to the decision in the two
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`NY55/3135772
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`

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`affirmative defenses already pleaded (i.e., res judicata and collateral estoppel).
`
`Moreover, since the discovery period is still open and neither side has served discovery
`
`requests, Jean Alexander has ample opportunity to take discovery regarding the judicial
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`estoppel defense, although it is difficult to imagine what discovery Jean Alexander would
`
`need inasmuch as it was a party to the Cancellation Proceeding and privy to all of the
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`documents filed therein. Jean Alexander could not possibly have relied to its detriment
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`on the absence of L'Oréal's having asserted the defense in its Answer from the brief time
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`that has elapsed between L'Oréal's initial pleading and now.
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`Where an amendment is proposed early in the proceeding, the Board has found
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`that the non-moving party would suffer no prejudice. See, eg, Focus 21, 22 U.S.P.Q.2d
`
`at 1318 (explaining that the motion to amend would be allowed since it was filed prior to
`
`the opening of petitioner’s testimony period and the discovery period could be reopened
`
`without undue prejudice to respondent); Microsoft Corp., 16 U.S.P.Q.2d at 1734
`
`(T.T.A.B. 1990) (allowing leave to amend where the proceeding was still in the discovery
`
`stage); Commodore Elecs. Ltd. v. CBM Kabushiki Kaisha Opposition, 26 U.S.P.Q.2d
`
`1503, 1506 (T.T.A.B. 1993) (explaining that “applicant plainly will not be prejudiced by
`
`allowance of a new claim” where sufficient time remained in the discovery period for
`
`applicant to serve additional discovery requests and opposer indicated its agreement to
`
`allow applicant further time to conduct any follow up discovery with respect to the new
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`claim sought to be added) (emphasis supplied); United States Olympic Comm. v. O—M
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`Bread Inc., 26 U.S.P.Q.2d 1221, 1223 (T.T.A.B. 1993) (granting opposer’s motion to
`
`amend and explaining that applicant would not be prejudiced because the proceeding was
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`NY55/3135772
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`

`
`still in the “pre-trial phase” and discovery had been extended); Polaris Industries, 2000
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`WL 33321170 at *2 (leave to amend would not be prejudicial to applicant where motion
`
`filed prior to close of discovery and opposer stipulates to an extension of the discovery
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`deadline).
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`There is no reason that leave to amend should not be granted here, and every
`
`reason that it should be. Jean Alexander will not be required to spend additional
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`resources to conduct discovery or prepare for trial since neither side has taken discovery
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`and the discovery period is not set to close until January 1, 2004. Moreover, denial of the
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`motion would prejudice L'Oréal and this Board substantially, since Opposer seeks to
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`relitigate the same issues it already prevailed on in the Cancellation Proceeding. As
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`explained below, not only is the amendment legally sufficient, but also the Board should
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`dismiss the notice of opposition in its entirety and estop Jean Alexander from asserting a
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`likelihood of confusion between the marks.
`
`B. Jean Alexander Is Estopped From Claiming That There Is A Likelihood Of
`Confusion Between The Marks.
`
`The doctrine ofj udicial estoppel is invoked to bar a party from advancing an
`
`inconsistent position to one it successfully relied on in a prior proceeding. See New
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`Hampshire v. Maine, 532 U.S. 742 (2001) (“’[W]here a party assumes a certain position
`
`in a legal proceeding, and succeeds in maintaining that position, he may not thereafter,
`
`simply because his interests have changed, assume a contrary position, especially if it be
`
`to the prejudice of the party who has acquiesced in the position formerly taken by him.’”)
`
`(internal citations omitted).
`
`NY55/3l3577.2
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`

`
`Judicial estoppel protects the sanctity and integrity of the judicial process from
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`those who try to play “fast and loose” with the courts. Lampi Corp. v. American Power
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`Products, Inc., 228 F.3d 1365, 1377, 56 U.S.P.Q.2d 1445 (Fed. Cir. 2000) (“[Judicial]
`
`estoppel applied where intentional self—contradiction is being used as a means of
`
`obtaining an unfair advantage.”); Wight v. BankAmerica Corp., 219 F.3d 79, 89 (2d Cir.
`
`2000) (“Judicial estoppel is designed to prevent a party who plays fast and loose with the
`
`courts from gaining unfair advantage through the deliberate adoption of inconsistent
`
`positions in successive suits.”).
`
`The principle ofjudicial estoppel is recognized and followed by the Board. Data
`
`General Corp. v. Johnson, 78 F.3d 1556 (Fed. Cir. 1996). The Board should invoke the
`
`doctrine here to estop Jean Alexander from asserting its flagrantly inconsistent claim that
`
`there is a likelihood of confusion between the subject marks.
`
`The Elements of Judicial Estoppel
`
`To determine whether judicial estoppel applies, the Board considers the following
`
`factors: (1) judicial acceptance of the previously asserted inconsistent position; (2) risk of
`
`inconsistent results; (3) effect of the pleading pa1ty’s actions on the integrity of the
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`judicial process; (4) perception that the tribunal has been misled; (5) reliance by the
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`opposing party; (6) prejudice to the opposing party’s case as a result of the inconsistent
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`position; and (7) the party against whom estoppel is invoked must have received some
`
`benefit from the previously taken position. Boston Chicken, Inc. v. Boston Pizza Int ’l,
`
`Inc., 53 U.S.P.Q.2d 1053, 1999 WL 1273346, at *2 (T.T.A.B. 1999). Here, each and
`
`every one of the above factors weighs in favor of applying judicial estoppel.
`
`NY55/3l3577.2
`
`

`
`1. Jean Alexander Prevailed In The Cancellation Proceeding After The
`Board Accepted Its Arguments That There Was No Likelihood Of
`Confusion.
`
`As set forth in detail above, Jean Alexander’s current position before the Board is
`
`in polar contradistinction to the position it took, and prevailed on, in the Cancellation
`
`Proceeding. In the Cancellation Proceeding, in order to defend the validity of its
`
`registration, Jean Alexander successfully argued that the subject marks are not
`
`confusingly similar. Not only did it generally deny a likelihood of confusion between the
`
`marks, but for its third affirmative defense, Jean Alexander also asserted:
`
`Use of the mark “EQ System and design” in connection with [Jean Alexander’s]
`Goods by [Jean Alexander] is not likely to cause confusion or to cause mistake or
`to deceive within the meaning of 15 U.S.C. Section lO52(d). (Sherman Decl.,
`Exh. B at ‘H 12).
`
`After considering all of the evidence, including testimony from Jean Alexander’s
`
`representatives that its EQ SYSTEM Mark and L’Oréal’s SHADES EQ Mark are
`
`“distinctly different,” the Board held that “there is no likelihood of confusion between
`
`[Jean Alexander’s] mark and [L’Oréal’s] original and modernized marks.” Cosmair,
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`2001 WL 1457589 at * 7. Specifically, the Board found that there are “significant
`
`differences in sound, appearance, meaning and commercial impression.” Id. at 4.
`
`2. Allowing Jean Alexander To Proceed Would Produce Inconsistent
`Results.
`
`Now, notwithstanding its success in the Cancellation Proceeding, Jean Alexander
`
`asks the Board to deny registration to L’Oréal’s mark on the basis of a likelihood of
`
`confusion between the same marks that were before the Board in the first proceeding.
`
`There can be no question that there is a risk of inconsistent results — Jean Alexander is
`
`NY55/3l3577.2
`
`10
`
`

`
`
`
`seeking exactly that. It now asks this Board to "reverse" its prior decision, with the result
`
`that Jean Alexander first will have successfully defended the Cancellation Proceeding
`
`and now would succeed in this opposition proceeding. The doctrine ofjudicial estoppel,
`
`however, prevents exactly that. See, e.g., Minnesota Mining and Mfg. Co. v. Chemque
`
`Inc., 303 F.3d 1294, 64 U.S.P.Q.2d 1270, 1275-76 (Fed. Cir. 2002) (judicial estoppel
`
`precluded patent infringement defendants from arguing that the jury’s findings were
`
`inconsistent since that position was in “direct conflict” with its previous position and
`
`“defendants cannot now take the opposite position so as to derive advantage”); U.S.
`
`Philips Corp. v. Sears Roebuck & Co., 55 F.3d 592, 597, 34 U.S.P.Q.2d 1699 (Fed. Cir.
`
`1995) (doctrine ofjudicial estoppel precluded alleged infringer from relitigating its
`
`antitrust claims); Smith & Johnson, Inc. v. Hedaya Home Fashions, Inc., 42 U.S.P.Q.2d
`
`1386, 1389 (S.D.N.Y. 1996) (copyright infringement claim barred by judicial estoppel
`
`after plaintiff admitted in the earlier action that it owned no copyright in the design);
`
`Novartis Consumer Health, Inc. v. Johnson & Johnson-Merck Consumer Pharm. C0,,
`
`129 F. Supp. 2d 351, 57 U.S.P.Q.2d 1522, 1528 (D.N.J. 2000),judgment a]j"d, 290 F.3d
`
`578, 62 U.S.P.Q.2d 1757 (3d Cir. 2002) (“Previously having unequivocally asserted the
`
`opposite argument, [defendant] is now judicially estopped from alleging that the ANC
`
`strength in fact correlates to or measures efficacy in vivo.”). L’Oréal cannot first have its
`
`petition to cancel denied and then have its application for registration denied based on the
`
`opposite side of the same issue.
`
`NY55/3l3577.2
`
`11
`
`

`
`3. Allowing Jean Alexander to Claim That There Is A Likelihood of
`Confusion Between The Marks Is An Affront to the Integrity and
`Authority of the Board.
`
`Allowing Jean Alexander to repudiate the position it successfully argued in the
`
`Cancellation Proceeding compromises the integrity and authority of this Board and its
`
`decisions. Using sleight of hand and hoping it can sneak one by the Board is not how the
`
`system works. The parties and the Board expended significant resources in fully
`
`litigating the Cancellation Proceeding. The Board rendered its decision and adopted Jean
`
`Alexander’s argument. Now to allow Jean Alexander to reverse its role and argue the
`
`flipside of the same issue not only gives Jean Alexander an unfair advantage over
`
`L’Oréal, but threatens the integrity and finality of the Board’s rulings. See US. Philips
`
`Corp., 55 F.3d at 597 (patent infringer’s position that it could “now require a duplicate
`
`trial of the identical issues, leaves us with the firm impression that [defendant] has
`
`‘played fast and loose with courts.”’). Did Jean Alexander really believe neither L'Oréal
`
`nor the Board would remember the Cancellation Proceeding, or fail to do its diligence in
`
`finding the prior decision?
`
`In an extraordinary effort to avoid this very opposition proceeding, the Board
`
`devoted approximately one—third of its opinion in the Cancellation Proceeding explaining
`
`the reasons for the absence of a likelihood of confusion between the marks. In total
`
`disregard, indeed disrespect, of that effort, Jean Alexander would put L’Oréal and the
`
`Board through another full proceeding, already aware of the prior outcome, in an effort
`
`somehow to trick the Board into an inconsistent result. Jean Alexander’s conduct is
`
`sanctionable.
`
`NY55/3l3577.2
`
`12
`
`

`
`
`
`4. The Board Has Been Misled.
`
`Jean Alexander’s notice of opposition fails to inform the Board of the single most
`
`important fact -— the Cancellation Proceeding -- in which the Board already decided there
`
`is no likelihood of confiasion between the marks. Nowhere in the notice does Jean
`
`Alexander inform the Board of its previous decision. Jean Alexander’s omission was not
`
`inadvertent. It is an obvious attempt to mislead the Board and for Jean Alexander to have
`
`its cake and eat it too.
`
`5. L’Oréal Relied on the Board’s Decision in the Cancellation Proceeding.
`
`Although L’Oréal disagreed with the Board’s finding that the original and
`
`modernized versions of the SHADES EQ Mark were not legal equivalents, it respected
`
`the Board’s decision and chose not to appeal.4 In making that choice, L’Oréal relied on
`
`Jean Alexander’s assertions in the Cancellation Proceeding that there was no likelihood
`
`of confusion between the marks. Because Jean Alexander had vigorously and
`
`successfully defended its registration on the Section 2(d) claim, the Board made it clear
`
`4
`
`In the Cancellation Proceeding, although the Board held that Cosmair could only rely
`on its priority in the original mark, it took great pains in specifically addressing
`whether there was a likelihood of confusion:
`
`We will not only consider whether petitioner’s original mark is confusingly
`similar to respondent’s mark, but, solely for the sake of completeness, we will
`also consider whether the modernized version of petitioner’s mark is
`confusingly similar to respondent’s mark. We do this in case upon further
`review, it is determined that petitioner’s original and modernized marks are
`legal equivalents.
`
`Without such a determination, of course, the finding of no likelihood of confusion
`stands.
`
`NY55/3135772
`
`13
`
`

`
`
`
`that both parties’ marks would coexist on the Principal Register. L’Oréal had the right to
`
`rely on the Board's decision and the fact that Jean Alexander's position was adopted by
`
`the Board.
`
`6. L’Oréal Would Be Severely Prejudiced If Forced To Relitigate The Issue.
`
`Allowing Jean Alexander to proceed with this opposition severely prejudices
`
`L’Oréal as a matter of fairness and equity. It also would allow Jean Alexander to deceive
`
`L'Oréal into not addressing the Board’s conclusion with respect to the equivalence of its
`
`modernized mark and its original mark. L’Oréal did not appeal the decision in the
`
`Cancellation Proceeding knowing that it would be allowed to register its mark (based on
`
`the determination of no likelihood of confusion). L’Oréal already expended significant
`
`resources fully litigating the Cancellation Proceeding. It must be able to rely on the
`
`finality of the Board’s rulings and make its business judgments accordingly.
`
`7. Jean Alexander Derived Benefit From Its Earlier Position.
`
`Simply put, Jean Alexander's prior inconsistent position upheld the Validity of its
`
`Registration. L’Oréal challenged the Registration on the ground of likelihood of
`
`confusion. Jean Alexander, quite naturally, took the other side, and won. One can hardly
`
`imagine a greater benefit in the context of a cancellation proceeding. Jean Alexander
`
`now would place itself in the position of the middle playing against both ends. For the
`
`sake of this Board's integrity, it must be estopped.
`
`NYS5/3l3577.2
`
`l4
`
`

`
`CONCLUSION
`
`Based on the foregoing, this Court should grant L’Oréal’s motion to amend its
`
`answer to add judicial estoppel as an affirmative defense and should enter judgment in
`
`favor of L’Oreal on that basis.
`
`Dated: October 31, 2003
`
`Respectfully submitted,
`
`PAUL, HASTINGS, JANOFSKY
`& W KER LLP
`
` Robert L. Sh
`
`Jennifer Shmulewitz
`
`Attorneys for Applicant
`75 E. 55th Street
`
`New York, New York 10022
`212-318-6000
`
`NY55/3l3577.2
`
`

`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`E ! F‘
`I hereby certify that this correspondenis being
`\
`P us ‘
`d
`'td 'ththU'tdStat
`“xi, Po‘; O'}'fi:e To f:d,::s:e..
`in an
`envelope addressed to:
`
`
`
`Commissiggtfr~f|oi?TEI';ademafl<s
`2900 Crystal Drive
`'
`A
`
`Opposition No. 91/156,843
`
`~—~ ._
`/‘T " ”"“‘-e ~
`IllllllIllllllllllllllIlllllllllllllllllllWill!
`
`1o-31-2003
`us. Patents: moi:/m M,“ ,.,,,,,,,_ We
`
`In the Matter of Application Serial No. 75/057,432
`-
`-
`-
`Published in the Official Gazette on January 14, 2003
`For the Mark: SHADES EQ & Design
`
`)
`)
`)
`
`) )
`
`) )
`
`)
`)
`)
`)
`
`_
`Jean Alexander Cosmetics, Inc.,
`
`V.
`
`L’Oréal USA, Inc.,
`
`Opposer,
`
`Applicant.
`
`DECLARATION OF ROBERT L. SHERMAN
`
`I, ROBERT L. SHERMAN, hereby declare under penalty of perjury:
`
`1.
`
`I am an attorney admitted to practice in the State of New York.
`
`I am a
`
`member of the law firm of Paul, Hastings, Janofsky & Walker LLP, attorneys for
`
`Applicant L’Oréal USA Creative, Inc.
`
`2.
`
`Exhibit A is a true and correct copy of Cosmair, Inc.’s Petition for
`
`Cancellation in Cancellation No. 26,649.
`
`3.
`
`Exhibit B is a true and correct copy of Jean Alexander Cosmetics, Inc.’s
`
`Answer and Affirmative Defenses in Cancellation No. 26,649.
`
`N‘/55/319814.]
`
`

`
`4.
`
`Exhibit C is a true and correct copy of the Trademark Trial and Appeal
`
`Board’s opinion in Cancellation No. 26,649.
`
`I hereby declare under penalty of perjury of the laws of the United States that the
`
`foregoing is true and correct to the best of my knowledge, information and belief.
`
`Executed on this 31st day of October 2003 in New York, New York.
`
`
`
`NY55/319814.]
`
`

`
`EXPRESS MAIL LBEL NO.: EI357327055US
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND AEPEAL BOARD
`
`In the matter ofU.S. Trademark Registration
`Number 1,790,050 issued August 31, 1993
`
`COSMAIR, INC.,
`
`Petitioner,
`
`v.
`
`x
`
`V
`
`.
`
`Cancellation No.:
`
`JEAN ALEXANDER COSMETICS, INC.
`
`Registrant.
`
`. . _ . . . . . . . _ _ . . . . . . _ _ _ _ . . . . _ . _ _ _ . _ _ _ _ X
`
`BETITION FQR CANCELLATION
`
`COSMAIR, INC. a corporation, organized and existing under the laws of A
`
`the State of Delaware, having a place ofbusiness at 575 Fifth Avenue, New York, New
`
`‘York 10017 (hereinafter referred to as "Cosmair" or “Petitioner”), believes it will be
`
`damaged by Registration No. 1,790,050 for the mark EQ SYSTEM and design owned by
`Jean Alexander Cosmetics, Inc., a Pennsylvania Corporation with an address at 815
`
`Seventh Street McKee Rocks (hereinafter referred to as "Registrant"), and hereby.
`
`petitions to cancel this registration.
`
`As grounds for cancellation, it is alleged that:
`
`_
`
`1. Cosmair is engaged ‘in the manufacture, distribution and sale of a full
`
`range of hair care, cosmetics, skin care,» and other personal care goods in the United
`
`" States.
`
`

`
`EXPRESS MAIL -'
`
`I LBEI. NO.: EI357327055US
`
`2. On February 13, 1996, Cosmair filed an application to register the
`trademark SHADES EQ and design. By amendment, those products are ideritifiedias hair
`
`care products, namely, shampoo and hair color which are sold to ‘and by professional
`hairdressers, stylists and salons, in International Class 3; charts for matching hair care
`
`products with various hair types, in International Class 16; and swatch rings containing
`
`sample hair pieces of various colors, in International Class 26, bearing Serial No.
`
`75/057,432.
`
`3. Registrant is the purported owner ofRegistration No. 1,790,050 dated
`
`August 31, 1993, for the mark EQ SYSTEM and design which is registered in respect of
`
`hair care preparations; namely, shampoo, conditioner, styling lotion, permanent wave,
`hair dressing
`International Class 3.
`
`4. Upon information and belief, Registrant first began using the mark EQ
`
`VSYSITEM and design in connection goods identified under International Class 3 on
`
`Iuly 5, 1990.
`
`5. Cosmair, through a predecessor in interest, has been using the
`
`SI-IADES EQ and design mark in connection with goods identified under International
`
`Class 3, as well as related merchandise since 1988, long before Registrant’s adoption, use
`or application to register the mark EQ SYSTEM. and design identified in Registration

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