ms
`
`
`
` COFINLUXE,
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition No.
`
`] ]
`
`] ]
`
`] ]
`
`] ]
`
`] ]
`
`V.
`
`NICHOLAS DIMITRI,
`
`Opposer,
`
`Applicant.
`
`NOTICE OF OPPOSITION
`
`Hon. Commissioner for Trademarks
`P.O. Box 1451
`
`Alexandria, VA 22313-1451
`
`Sir:
`
`In the matter of the application for registration of the
`
`trademark CAFE DEL MAR for fragrances for personal use,
`
`room
`
`fragrances, essential oils and incenses in class 3, Serial No.
`
`77/012,346, filed October 3, 2006 by Nicholas Dimitri, and
`
`published for Opposition on June 19, 2007; Cofinluxe,
`
`a French
`
`Company, having its principal place of business at rue Anatole
`
`de la Forge, 75017, Paris, France, believes that it would be
`
`damaged by such registration and hereby opposes registration
`
`703837-9600
`
`LAWOFFICES
`
`
`
`DENNISON,SCHULTZ&MACDONALD
`
`
`
`surreI05
`
`
`
`I727KINGSTREET
`
`
`
`
`
`ALEXANDRIA.VIRGINIA22314-2700
`
`09/17/2007 09000
`‘_u:.-we
`
`pun
`
`00000082 2785620
`
`300.00 00
`
`09-13-2007
`
`’
`
`0 w.ar.t
`
`0 1v.0r.:/In M Rm Gt
`
`
`
`
`
` COFINLUXE,
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition No.
`
`] ]
`
`] ]
`
`] ]
`
`] ]
`
`] ]
`
`V.
`
`NICHOLAS DIMITRI,
`
`Opposer,
`
`Applicant.
`
`NOTICE OF OPPOSITION
`
`Hon. Commissioner for Trademarks
`P.O. Box 1451
`
`Alexandria, VA 22313-1451
`
`Sir:
`
`In the matter of the application for registration of the
`
`trademark CAFE DEL MAR for fragrances for personal use,
`
`room
`
`fragrances, essential oils and incenses in class 3, Serial No.
`
`77/012,346, filed October 3, 2006 by Nicholas Dimitri, and
`
`published for Opposition on June 19, 2007; Cofinluxe,
`
`a French
`
`Company, having its principal place of business at rue Anatole
`
`de la Forge, 75017, Paris, France, believes that it would be
`
`damaged by such registration and hereby opposes registration
`
`703837-9600
`
`LAWOFFICES
`
`
`
`DENNISON,SCHULTZ&MACDONALD
`
`
`
`surreI05
`
`
`
`I727KINGSTREET
`
`
`
`
`
`ALEXANDRIA.VIRGINIA22314-2700
`
`09/17/2007 09000
`‘_u:.-we
`
`pun
`
`00000082 2785620
`
`300.00 00
`
`09-13-2007
`
`’
`
`0 w.ar.t
`
`0 1v.0r.:/In M Rm Gt
`
`
`
`of said alleged trademark as it applies to the goods set forth
`
`therein.
`
`Opposer has obtained an extension of time through October
`
`17, 2007 in which to file this Notice of Opposition.
`
`As grounds for the opposition, it is alleged that:
`
`1. Applicant, Nicholas Dimitri,
`
`is on information and belief
`
`a citizen of Italy with an address at Via Bosco Berizzl, 4,
`
`Dese—Favero, Veneto (Ve), Italy; and seeks to register the
`
`trademark CAFE DEL MRR and Design for fragrances for personal
`
`use,
`
`room fragrances, essential oils in class 3, as set forth
`
`in the above noted application.
`
`The application was filed on
`
`October 3, 2006 based upon an intent-to-use the mark in
`
`commerce. There is no claim of actual use of the mark.
`
`The
`
`application was published on June 19, 2007 in the Official
`
`Gazette of the United States Patent and Trademark Office.
`
`2. Opposer is well known throughout
`
`the world in the field of
`
`cosmetics, perfumery and similar beauty products and has and
`
`is presently engaged in the manufacture and marketing of its
`
`products in the United States as well as throughout the world.
`
`
`
`3. Opposer or its predecessors in interest have used their
`
`well-recognized trademarks CAFE and Design and CAFE CAFE PURO
`
`and CAFE EXPRESSO on cosmetic goods in the United States
`
`marketplace. Opposer has used its CAFE and Design mark in
`
`commerce for over twenty years.
`
`4. Opposer's mark CAFE and Design is the subject of United
`
`States Trademark Registration No. 1,177,730, registered on
`
`November 17, 1981. This registration is incontestible under
`
`Section 15 and has been renewed and is in full force and
`
`effect.1
`
`5. Opposer's registration identified in Paragraph 4, supra,
`
`covers perfumes and toilet waters in Class 3.
`
`6. Opposer's mark CAFE CAFE PURO is the subject of United
`
`States Trademark Registration No. 2,785,628, registered on
`
`November 25, 2003. This registration covers soaps for
`
`personal use; essential oils used for manufacture of
`
`1 Certified copies showing status and title of each of
`Opposer's registrations will be introduced during the
`trial phase of this proceeding.
`
`3
`
`
`
`perfumery; perfume; toilet water; perfumed water; cosmetics,
`
`namely,
`
`lipsticks,
`
`lip pens, eye shadow, facial make up,
`
`mascaras, hair lotions, and tooth paste in Class 3.
`
`7. Opposer’s mark CAFE EXPRESSO is the subject of United
`
`States Trademark Registration No. 2,545,924, registered on
`
`March 12, 2002. This registration covers toilet soap, hair
`
`shampoo, perfume products, namely, perfumes, toilet waters,
`
`perfumed skin lotion, eau de cologne, personal deodorants,
`
`after—shave lotions, essential oils for personal use; bath and
`
`shower gels, body milks and lotions,; cosmetics, namely,
`
`blushes,
`
`lipsticks, perfumed talc, hydrating creams for the
`
`skin, powders for the skin, eye shadow, mascara, nail polish;
`
`and dentifrices in Class 3.
`
`8. Opposer packages its goods in distinctive containers and
`
`the marks of the Opposer are prominently displayed on such
`
`packaging.
`
`
`
`9. Opposer’s trademarked goods, noted above, are distributed
`
`in commerce throughout the United States and elsewhere and
`
`enjoy a high degree of consumer acceptance and recognition.
`
`10. Opposer’s CAFE goods are advertised in various media
`
`distributed throughout the United States.y,
`
`11. Applicant's mark is so similar to Opposer’s marks as to
`
`be likely to cause confusion, mistake or deception as to the
`
`source of the goods of the Applicant, especially since the
`
`Applicant's mark is intended to be used in conjunction with
`
`cosmetic products that are identical or closely related to the
`
`goods of the Opposer.
`
`12.
`
`The marks here in issue are visually and phonetically
`
`similar, and present the same connotation to the consumer of
`
`the goods and the applicant's mark incorporates Opposer’s
`
`famous “CAFE” brand.
`
`13.
`
`If the 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 marks would be likely to
`
`purchase Applicant's products in the mistaken belief that such
`
`goods originate with the Opposer. Any such confusion will
`
`inevitably result in loss of sales to Opposer. Moreover, any
`
`objection or fault found with Applicant's cosmetics sold under
`
`the CAFE DEL MRR 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.
`
`14. Registration of the mark at issue herein to Applicant
`
`will be a source of damage and injury to Opposer.
`
`
`
`ll’:
`
`WHEREFORE, Opposer prays that Application Serial Number
`
`77/012,346 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 the Trademark Rules of
`
`Practice, 2.6(a)(17)
`
`is enclosed in the form of a Credit Card
`
`charge authorization.
`
`September 13, 2007
`
`Respectfully submitted,
`
`By M4//«lg
`
`Donald L. Dennison
`
`Dennison, Schultz,
`
`& Macdonald
`
`Attorneys for Opposer
`1727 King Street, Suite 105
`Alexandria, VA 22314
`(703)837-9600 Ext. 15
`Fax (703)837-0980
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