IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`BEAUTE PRESTIGE INTERNATIONAL,
`
`Opposer,
`
`vs.
`DELTA PERFUME HOUSE,
`
`INC.
`
`Applicant.
`
`|_a|_nL_:n...1|_:L_:|_n|_an_a|_n%a
`
`OPPOSITION No.
`
`77
`
`I I ‘B
`
`E
`
`‘ NOTICE OF OPPOSITION
`
`Beaute Prestige International, a French corporation, with
`
`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
`
`76/441,741 in International Class 3 and hereby opposes the
`
`same:
`
`M
`
`03/12/2007 GTHOHASE 00000082 76441741
`
`01 rc:s4o2
`
`3oo.oo on
`
`As grounds for the opposition it is alleged that:
`
`1. Applicant,
`
`Delta Perfume House, Inc.,
`
`on information and
`
`belief, a New York corporation with an address at 5723 Second
`
`703837-9600
`
`Avenue, Brooklyn, New York, seeks to register a container in
`
`the shape of a female torso for fragrances, namely, perfumes,
`
`as set forth in the above noted application.
`
`The application
`
`was filed on August 20, 2002 based upon alleged use in
`
`_l_
`
`03-07-2007
`U.S. Patent&TMOfcITM Mail RcplDt. #72
`
`LAWOFFICES
`
`
`
`DENNISON,SCHULTZ&MACDONALD
`
`
`
`SUITEI05
`
`I727KINGSTREET
`
`
`
`
`
`ALEXANDRIA,VIRGINIA223I4-2700
`
`
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`BEAUTE PRESTIGE INTERNATIONAL,
`
`Opposer,
`
`vs.
`DELTA PERFUME HOUSE,
`
`INC.
`
`Applicant.
`
`|_a|_nL_:n...1|_:L_:|_n|_an_a|_n%a
`
`OPPOSITION No.
`
`77
`
`I I ‘B
`
`E
`
`‘ NOTICE OF OPPOSITION
`
`Beaute Prestige International, a French corporation, with
`
`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
`
`76/441,741 in International Class 3 and hereby opposes the
`
`same:
`
`M
`
`03/12/2007 GTHOHASE 00000082 76441741
`
`01 rc:s4o2
`
`3oo.oo on
`
`As grounds for the opposition it is alleged that:
`
`1. Applicant,
`
`Delta Perfume House, Inc.,
`
`on information and
`
`belief, a New York corporation with an address at 5723 Second
`
`703837-9600
`
`Avenue, Brooklyn, New York, seeks to register a container in
`
`the shape of a female torso for fragrances, namely, perfumes,
`
`as set forth in the above noted application.
`
`The application
`
`was filed on August 20, 2002 based upon alleged use in
`
`_l_
`
`03-07-2007
`U.S. Patent&TMOfcITM Mail RcplDt. #72
`
`LAWOFFICES
`
`
`
`DENNISON,SCHULTZ&MACDONALD
`
`
`
`SUITEI05
`
`I727KINGSTREET
`
`
`
`
`
`ALEXANDRIA,VIRGINIA223I4-2700
`
`
`
`commerce of November 7, 2000. The application was published on
`
`January 9, 2007 in the Official Gazette of the United States
`
`Patent and Trademark Office. Opposer has obtained an
`
`extension of time until May 9. 2007 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.
`
`Copies of these registration certificates are attached as
`
`Exhibits A, B and C, respectively. Opposer will rely on these
`
`
`
`registrations and a Notice of Reliance and certified copies
`
`showing status and title will be filed during Opposer’s
`
`testimony period pursuant to Trademark Rule of Practice
`
`2.l22(d)(2). Each of these registrations are in full force and
`
`effect and are incontestible under Section 15 of the Lanham
`
`Act.
`
`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 configuration 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 products, Opposer has gained for its above identified
`
`marks an exceedingly valuable reputation and goodwill.
`
`
`
`8. Applicant's mark which is also a container admittedly in
`
`the shape of a female torso so closely mimics the marks 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 sold therein, especially because
`
`Applicant's mark is sought to be 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 container configuration
`
`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
`
`76/441,741 be rejected, and that registration of the mark
`
`shown therein for the goods set forth therein be refused and
`
`denied.
`
`The fee of $300.00 required by Trademark Rule of Practice
`
`2.6 (a)(l7)
`
`is enclosed.
`
`Respectfully submitted,
`
`Date:
`
`find-rcl 7137007
`
`Donald L. Dennison
`
`Dennison, Schultz & Macdonald
`
`Attorneys for Opposer
`1745 Jefferson Davis Highway
`Arlington, VA 22202
`(703)837-9600 Ext. 15
`
`
`
`Int. CL: 3
`
`Prior U.S. Cls.: 1, 4, 6, 50, 51 and 52
`
`United States Patent and Trademark Office
`
`Reg. No. 2,141,962
`
`Registered Mar. 10, I998
`
`TRADEIVIARK
`
`PRINCIPAL REGISTER
`
`
`
`PRESTIGE
`BEAUTE
`(FRANCE CORPORATION)
`I8, AVENUE MATIGNON
`75008 PARIS. FRANCE
`
`INTERNATIONAL
`
`FOR: SKIN SOAPS, PERFUMES, ESSENTIAL ‘'
`OILS FOR PERSONAL USE. HAIR LOTIONS:‘~
`AND
`DENTIFRICES; AND
`COSMETICS,
`NAMELY, 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-DI-
`MENSIONAL SHAPE OF THE CONTAINER
`FOR THE GOODS.
`
`SER. NO. 75—I46,244, FILED 8-6-1996.
`
`PAULA MAYS. EXAMINING ATTORNEY
`
`
`
`Int. CL: 3
`
`_
`
`Prior U.S.- Lu»: 1‘, 4, 6, 50, 51 and.52
`
`Reg. No. 2,073,555 C
`United States Patent and Trademark Office 11% July 1:. 15;»;
`
`.
`
`% TRADEMARK
`PRINCIPAL REGISTER
`
`
`
`I-I-I995:
`
`IN COMMERCE
`
`FIRST USE
`I-1-1995.
`THE STIPPLING IS FOR SHADING PUR-
`POSES AND TO REPRESENT A FROSTED AP-
`PEARANCE.
`-
`-
`SE8. No. 75-022.907. FILED ll-20-I995.
`-
`PAULA MAYS. EXAMINING ATTORNEY
`
`-
`
`. PRESTIGE
`BEAUTE
`_
`(FRANCE CORPORATION)
`18, AVENUE MAT!GNON
`75008 PARIS. FRANCE
`
`INTERNATIONAL
`
`F0lL- woMEN‘S FRAGRANCE PRODUCTS.
`NAMELY. PERFUME AND EAU DE -To!-‘
`LBTTE. IN CLASS 3 (us. CL8. 1, 4, 5, so, 3}
`AND 52)
`.
`.
`
`'
`
`E Xi/‘I8/T " 3
`
`
`
`Int. CL: 3
`
`Reg No. 2,080,775
`Prior U.S. CIs.: 1, 4, 6, 50, 51 and 52
`
`United States Patent and Trademark Office Registered-M¥21.1997
`
`‘.
`
`I
`
`TRADEMARK
`PRINCIPAL REGISTER
`
`
`
`PRESTIGE
`BEAUTE
`(FRANCE CORPORATION)
`18. AVENUE MATIGNON
`75003 PARIS. FRANCE
`
`INTERNATIONAL
`
`FOR: WOMEN'S FRAGRANCE PRODUCTS.
`NAMELY. PERFUME AND EAU DE TOI-
`LETTE.
`IN CLASS 3 (U.S. CLS.
`I, 4, 6. 50. 51
`AND 52).
`
`IN COMMERCE
`I—I—I995;
`FIRST USE
`I-I-1995.
`THE LINING IN THE DRAWING IS FOR
`‘ SHADING PURPOSES ONLY AND IS NOT IN-
`TENDED TO REPRESENT COLOR.
`
`SER. NO. 75-022,923. FILED ll—2(_)—l995.
`
`PAULA MAYS, EXAMINING ATTORNEY
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