Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA423310
`ESTTA Tracking number:
`08/03/2011
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`Notice of Opposition
`
`Notice is hereby given that the following party opposes registration of the indicated application.
`Opposer Information
`
`Name
`Granted to Date
`of previous
`extension
`Address
`
`philosophy, inc.
`08/03/2011
`
`3809 East Watkins Street
`Phoenix, AZ 85034
`UNITED STATES
`
`Attorney
`information
`
`SID LEACH
`SNELL & WILMER L.L.P.
`ONE ARIZONA CENTER, 400 E VAN BUREN ST
`PHOENIX, AZ 85004
`UNITED STATES
`sleach@swlaw.com,dbarker@swlaw.com,lwood@swlaw.com,ipdocket@swlaw.
`com
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`International
`Registration No.
`Applicant
`
`85108847
`08/03/2011
`
`NONE
`
`Publication date
`Opposition
`Period Ends
`International
`Registration Date
`
`04/05/2011
`08/03/2011
`
`NONE
`
`Bio Kor Metics Ltd.
`7 hahashmonaim st.
`Bnei Brak, 51262
`ISRAEL
`Goods/Services Affected by Opposition
`
`Class 003.
`All goods and services in the class are opposed, namely: Body and beauty care cosmetics; Cosmetic
`creams; Cosmetic masks; Cosmetic preparations; Cosmetics in the form of milks, lotions and
`emulsions; Skin and body topical lotions, creams and oils for cosmetic use; Skin conditioning creams
`for cosmetic purposes
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act section 2(d)
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`
`2016208
`
`Application Date
`
`10/24/1994
`
`
`ESTTA423310
`ESTTA Tracking number:
`08/03/2011
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`Notice of Opposition
`
`Notice is hereby given that the following party opposes registration of the indicated application.
`Opposer Information
`
`Name
`Granted to Date
`of previous
`extension
`Address
`
`philosophy, inc.
`08/03/2011
`
`3809 East Watkins Street
`Phoenix, AZ 85034
`UNITED STATES
`
`Attorney
`information
`
`SID LEACH
`SNELL & WILMER L.L.P.
`ONE ARIZONA CENTER, 400 E VAN BUREN ST
`PHOENIX, AZ 85004
`UNITED STATES
`sleach@swlaw.com,dbarker@swlaw.com,lwood@swlaw.com,ipdocket@swlaw.
`com
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`International
`Registration No.
`Applicant
`
`85108847
`08/03/2011
`
`NONE
`
`Publication date
`Opposition
`Period Ends
`International
`Registration Date
`
`04/05/2011
`08/03/2011
`
`NONE
`
`Bio Kor Metics Ltd.
`7 hahashmonaim st.
`Bnei Brak, 51262
`ISRAEL
`Goods/Services Affected by Opposition
`
`Class 003.
`All goods and services in the class are opposed, namely: Body and beauty care cosmetics; Cosmetic
`creams; Cosmetic masks; Cosmetic preparations; Cosmetics in the form of milks, lotions and
`emulsions; Skin and body topical lotions, creams and oils for cosmetic use; Skin conditioning creams
`for cosmetic purposes
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act section 2(d)
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`
`2016208
`
`Application Date
`
`10/24/1994
`
`
`
`Registration Date
`
`11/12/1996
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`PHILOSOPHY
`
`NONE
`
`Class 003. First use: First Use: 1996/01/01 First Use In Commerce: 1996/01/01
`cosmetics, namely lipsticks, lip gloss, lip liner, lip pencil, eye pencil, mascara,
`eye liner, eye shadow, face powder, foundation, and blush; for fragrances,
`namely perfume, toilet water and cologne; for facial and body skin care
`products, namely exfoliation scrubs, washes, cleansers, lotions, and creams; for
`sun care products, namely suntanning creams, lotions, oils and gels, after sun
`creams and lotions, sunblock preparations, and sunscreens; for hair care
`products, namely shampoo, conditioner, and hairspray; for massage lotions and
`oils; for foot care products, namely creams and lotions; for non-medicated skin
`lightening preparations
`
`U.S. Registration
`No.
`Registration Date
`
`2214968
`
`12/29/1998
`
`Application Date
`
`04/02/1996
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`PHILOSOPHY
`
`NONE
`
`Class 018. First use: First Use: 1997/09/01 First Use In Commerce: 1997/09/01
`[ trunks and ] travelling bags [ ; umbrellas and parasols ]
`
`U.S. Registration
`No.
`Registration Date
`
`2269341
`
`08/10/1999
`
`Word Mark
`Design Mark
`
`PHILOSOPHY
`
`Application Date
`
`04/02/1996
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 041. First use: First Use: 1999/03/15 First Use In Commerce: 1999/03/15
`educational seminars and workshops in the field of cosmetics and skin care;
`entertainment in the nature of award ceremonies
`
`U.S. Registration
`No.
`
`2388010
`
`Application Date
`
`09/25/1995
`
`
`
`Registration Date
`
`09/19/2000
`
`Word Mark
`Design Mark
`
`PHILOSOPHY
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 042. First use: First Use: 2000/05/12 First Use In Commerce: 2000/05/12
`retail store services featuring a full line of cosmetics, hair care products, bath
`products, skin care products, fragrances, [ music, books, jewelry and
`accessories ]
`
`U.S. Registration
`No.
`Registration Date
`
`3406516
`
`04/01/2008
`
`Word Mark
`Design Mark
`
`PHILOSOPHY
`
`Application Date
`
`05/24/2004
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 014. First use: First Use: 2007/12/21 First Use In Commerce: 2007/12/21
`Jewelry
`
`U.S. Registration
`No.
`Registration Date
`
`3412632
`
`04/15/2008
`
`Word Mark
`
`PHILOSOPHY
`
`Application Date
`
`04/05/2004
`
`Foreign Priority
`Date
`
`NONE
`
`
`
`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 016. First use: First Use: 2007/11/05 First Use In Commerce: 2007/11/05
`Greeting cards
`Class 041. First use: First Use: 1996/00/00 First Use In Commerce: 1996/00/00
`Publishing services, namely, books, short stories, pamphlets, newsletters
`
`U.S. Registration
`No.
`Registration Date
`
`3440195
`
`06/03/2008
`
`Word Mark
`Design Mark
`
`PHILOSOPHY
`
`Application Date
`
`10/02/2007
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 021. First use: First Use: 1996/05/31 First Use In Commerce: 1996/05/31
`Cosmetic brushes
`
`U.S. Registration
`No.
`Registration Date
`
`3514047
`
`10/07/2008
`
`Word Mark
`
`PHILOSOPHY
`
`Application Date
`
`05/24/2004
`
`Foreign Priority
`Date
`
`NONE
`
`
`
`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`Attachments
`
`NONE
`
`Class 004. First use: First Use: 2002/04/17 First Use In Commerce: 2002/04/17
`candles
`Class 005. First use: First Use: 1996/01/01 First Use In Commerce: 1996/01/01
`acne treatment preparations; air freshener; medicated skin lotions
`Class 018. First use: First Use: 2005/12/07 First Use In Commerce: 2005/12/07
`beach bags; all purpose bags, namely, all purpose sport bags; book bags
`
`75082661#TMSN.gif ( 1 page )( bytes )
`74734177#TMSN.gif ( 1 page )( bytes )
`78423910#TMSN.jpeg ( 1 page )( bytes )
`78396564#TMSN.jpeg ( 1 page )( bytes )
`77293608#TMSN.jpeg ( 1 page )( bytes )
`78424009#TMSN.jpeg ( 1 page )( bytes )
`Peelosophy Notice of Opposition.pdf ( 9 pages )(79421 bytes )
`Exh A -- philosophy registrations.pdf ( 35 pages )(314868 bytes )
`Exh B -- philosophy peel products.pdf ( 7 pages )(880868 bytes )
`Exh C -- Israel registration.pdf ( 3 pages )(445895 bytes )
`Exh D -- peelosophy products.pdf ( 9 pages )(730735 bytes )
`Exh E -- peelosophy internet products.pdf ( 4 pages )(120710 bytes )
`
`Certificate of Service
`
`The undersigned hereby certifies that a copy of this paper has been served upon all parties, at their address
`record by First Class Mail on this date.
`
`Signature
`Name
`Date
`
`/Sid Leach/
`SID LEACH
`08/03/2011
`
`
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`In the Matter of Application Serial No. 85/108,847
`MARK: PEELOSOPHY
`Published in the Official Gazette of April 5, 2010, at page TM 350.
`
`
`
`
`
` Opposition No.:
`
`
`
`philosophy, inc., an Arizona corporation,
`
`
`
`
`
` Opposer,
`
`
`
` vs.
`
`Bio Kor Metics Ltd., an Israel corporation,
`
`
`
` Applicant.
`
`
`
`
`
`
`
`
`
`
`
`NOTICE OF OPPOSITION
`
`philosophy, inc., an Arizona corporation, with its principal place of business at 3809 E.
`
`Watkins Street, Phoenix, Arizona, 85034 (“Opposer”), believes that it will be damaged by the
`
`registration of intent-to-use Trademark Application Serial No. 85/108,847, filed under § 44(e) of
`
`the Lanham Act, 15 U.S.C. § 1126(e), for the mark PEELOSOPHY and design (“Applicant’s
`
`Mark”) with intended use in connection with “Body and beauty care cosmetics; Cosmetic
`
`creams; Cosmetic masks; Cosmetic preparations; Cosmetics in the form of milks, lotions and
`
`emulsions; Skin and body topical lotions, creams and oils for cosmetic use; Skin conditioning
`
`creams for cosmetic purposes” in International Class 003.
`
`
`
`As grounds for opposition, including grounds under the provisions of Section 13 of the
`
`Trademark Act of 1946, 15 U.S.C. §1063, as amended, Opposer hereby alleges the following:
`
`
`
`
`
`- 1 -
`
`
`
`1.
`
`For many years, Opposer has been in the business of selling a wide variety of
`
`personal care products, including skin care products, fragrances, bath and body products, make-
`
`up, and hair care products under the trademark PHILOSOPHY (“Opposer’s Mark”).
`
`Opposer has for many years used the mark PHILOSOPHY on identical products to those
`
`products for which registration is sought, including but not limited to body and beauty care
`
`cosmetics; cosmetic creams; cosmetic masks; cosmetic preparations; cosmetics in the form of
`
`lotions and emulsions; skin and body topical lotions and creams for cosmetic use; and skin
`
`conditioning creams for cosmetic purposes. Opposer’s products are sold in retail stores,
`
`including major national department store chains, as well as Opposer’s own retail stores
`
`operating under Opposer’s Mark. Opposer also markets and sells its products through an
`
`Internet web site at philosophy.com.
`
`2.
`
`philosophy was founded by Cristina Carlino, who has spent over 25 years in the
`
`health and beauty industry as a product researcher and skincare specialist. Cristina Carlino is a
`
`recognized leader in pioneering and identifying medically based skin care techniques, and she
`
`continues to be closely connected with Opposer. Cristina Carlino is a well known author, and
`
`has received awards for her public service and charitable efforts. Cristina Carlino has appeared
`
`on QVC television programs to promote philosophy products. The public associates Cristina
`
`Carlino with Opposer’s products and services, and with Opposer’s PHILOSOPHY mark.
`
`3.
`
`Opposer is well known for, and associated with, products used for cosmetic skin
`
`peels. For example, Opposer uses the PHILOSOPHY mark in connection with a product known
`
`as “the oxygen PEEL” skin foam, in connection with which the word PEEL is emphasized and
`
`prominently displayed on the product packaging. Applicant’s intended use of its mark will
`
`similarly emphasize the word “PEEL.”
`
`
`
`
`- 2 -
`
`
`
`4.
`
`Applicant intends to use the PEELOSOPHY mark and “Christina” (see first
`
`image below) in connection with goods identical to Opposer’s.
`
`
`
`
`
`
`
`5.
`
`Applicant’s mark is confusingly similar in sight and sound to Opposer’s marks, is
`
`intended for the identical goods, and will be sold through the identical channels of trade,
`
`including the Internet. In addition, the combination of other factors increases the likelihood of
`
`confusion. Applicant’s use of “Christina” on its packaging enhances the likelihood that
`
`consumers will be confused and will associate Applicant’s products with Opposer’s products
`
`pioneered by Cristina Carlino, because the public associates Cristina Carlino with Opposer.
`
`Applicant’s use of the mark “PEELosophy” on identical goods enhances the likelihood of
`
`confusion with Opposer’s “the oxygen PEEL” product by PHILOSOPHY. In addition, as alleged
`
`below, Opposer sells additional products in which the word “PEEL” is emphasized and is a
`
`featured part of Opposer’s marks used in connection with such products. Furthermore,
`
`Applicant’s intended trade dress is substantially similar to Opposer’s trade dress, which
`
`exacerbates the likelihood of confusion.
`
`6.
`
`Opposer owns U.S. Trademark Registration Nos. 2,016,208; 2,214,968;
`
`2,269,341; 2,388,010; 3,406,516; 3,412,632; 3,440,195; and 3,514,047 for
`
`the mark
`
`PHILOSOPHY for use in connection with a variety of products and services, including goods in
`
`
`
`- 3 -
`
`
`
`International Class 003, such as cosmetics, facial skin care products, exfoliation scrubs, washes,
`
`cleansers, lotions, and creams (“Opposer’s Mark Registrations”).
`
`7.
`
`Opposer’s Mark Registrations are valid, incontestable, and in full force and effect.
`
`Copies of Opposer’s Mark Registrations and status information from the USPTO’s TARR
`
`database are attached hereto as Exhibit A.
`
`8.
`
`Opposer has continuously used Opposer’s Mark in connection with goods listed
`
`in its registrations since at least as early as January 1, 1996.
`
`9.
`
`Opposer sells products in connection with Opposer’s Mark that bear the term
`
`“peel” on the product packaging.
`
`10.
`
`Opposer sells the PHILOSOPHY® microdelivery peel, a two-step, in-home peel
`
`that resurfaces, and rejuvenates sun-damaged, hyperpigmented and aging skin.
`
`11.
`
`Opposer sells the PHILOSOPHY® oxygen peel, an in-home oxygen peel that
`
`brightens, clarifies, and detoxifies the skin.
`
`12.
`
`Opposer sells the PHILOSOPHY® microdelivery mini peel pads for in-home use,
`
`which are gentle exfoliating pads that help smooth, hydrate, and condition skin, with antioxidants
`
`that help protect skin against environmental attack.
`
`13.
`
`Images of the PHILOSOPHY® microdelivery peel, the PHILOSOPHY® oxygen
`
`peel, the PHILOSOPHY® microdelivery mini peel pads, and other of Opposer’s products marked
`
`with “philosophy” and “peel” (collectively, the “PHILOSOPHY Peel Products”) are attached
`
`hereto as Exhibit B.
`
`14.
`
`The term “peel” appears prominently on the packaging for the PHILOSOPHY
`
`Peel Products.
`
`15.
`
`The term “peel” appears prominently in connection with the PHILOSOPHY mark
`
`on the packaging for the PHILOSOPHY Peel Products.
`
`
`
`
`- 4 -
`
`
`
`16.
`
`Some of the PHILOSOPHY Peel Products include a white container with a black
`
`cap.
`
`17.
`
`Opposer has spent and continues to spend substantial sums of money in
`
`advertising and promoting its products under Opposer’s Mark, including the PHILOSOPHY Peel
`
`Products. Through Opposer’s sales and promotion of its products under Opposer’s Mark,
`
`Opposer has developed substantial goodwill and consumer recognition in the mark.
`
`18.
`
`19.
`
`20.
`
`Internet.
`
`21.
`
`22.
`
`Consumers recognize Opposer as the source of the PHILOSOPHY Peel Products.
`
`The PHILOSOPHY Peel Products are available for in-home use.
`
`The PHILOSOPHY Peel Products are advertised and available for sale on the
`
`The PHILOSOPHY Peel Products are available for sale in physical locations.
`
`Applicant’s Trademark Application Serial No. 85/108,847 for PEELOSOPHY
`
`and Design (“Applicant’s Application”) is an intent-to-use application filed under 15 U.S.C. §
`
`1126(e) based on an Israel trademark registration for the following goods: “Cosmetics, care and
`
`beaury [sic] products; all included in class 3.” A copy of the Israel trademark registration is
`
`attached as Exhibit C.
`
`23.
`
`Applicant’s Application was filed on August 17, 2010 and lists the following
`
`goods: “Body and beauty care cosmetics; Cosmetic creams; Cosmetic masks; Cosmetic
`
`preparations; Cosmetics in the form of milks, lotions and emulsions; Skin and body topical
`
`lotions, creams and oils for cosmetic use; Skin conditioning creams for cosmetic purposes,” in
`
`International Class 003.
`
`24.
`
`Applicant has not used Applicant’s Mark in the United States.
`
`
`
`
`- 5 -
`
`
`
`25.
`
`Applicant has used Applicant’s Mark in other countries, and images and
`
`descriptions of Applicant’s products sold in connection with Applicant’s Mark are attached
`
`hereto as Exhibit D.
`
`26.
`
`Applicant intends to sell cosmetic peel-related products for skin care in
`
`connection with Applicant’s Mark for in-home use.
`
`27.
`
`Applicant intends to sell products in connection with Applicant’s Mark through
`
`physical locations.
`
`28.
`
`Applicant’s products bearing Applicant’s Mark are advertised on the Internet. See
`
`Exh. D.
`
`29.
`
`Applicant’s products bearing Applicant’s Mark are intended to be sold on the
`
`Internet.
`
`30.
`
`31.
`
`Applicant’s products are available for sale on the Internet. See Exh. E.
`
`Applicant’s Cell Regenerator, Cell Regenerator Forte, and Hyperpigmentation
`
`Corrector products bearing Applicant’s Mark and available for in-home use are intended to
`
`address hyperpigmentation and sun damage. See Exh. D.
`
`32.
`
`Uses of the PHILOSOPHY Peel Products are to address hyperpigmentation and
`
`sun damage.
`
`33.
`
`Applicant’s Cell Rejuvenator, Cell Regenerator, and Cell Regenerator Forte
`
`products bearing Applicant’s Mark and available for in-home use are intended to rejuvenate skin.
`
`See Exh. D.
`
`34.
`
`35.
`
`36.
`
`One use of the PHILOSOPHY Peel Products is to rejuvenate skin.
`
`Applicant’s Mark was published for opposition on April 5, 2010.
`
`Opposer filed and was granted an extension to August 3, 2011, to oppose
`
`Applicant’s Mark.
`
`
`
`
`- 6 -
`
`
`
`37.
`
`There is no issue of priority in the present case because the first use date of
`
`Opposer’s Mark in 1996 was well prior to the August 17, 2010 filing date of Applicant’s intent-
`
`to-use application, and Applicant did not use Applicant’s Mark in the United States prior to
`
`August 17, 2010.
`
`38.
`
`Applicant’s PEELOSOPHY mark
`
`is substantially similar
`
`to Opposer’s
`
`PHILOSOPHY mark.
`
`39.
`
`Applicant intends to offer peel-related skin care and cosmetic products for in-
`
`home use in connection with Applicant’s Mark.
`
`40.
`
`Applicant intends to offer peel-related skin care and cosmetic products for in-
`
`home use in connection with Applicant’s Mark and a white container with a black cap.
`
`41.
`
`Before Applicant’s Application was filed, Opposer sold peel-related skin care and
`
`cosmetic products for in home use in connection with Opposer’s Mark.
`
`42.
`
`The goods
`
`identification
`
`in Applicant’s Application encompasses
`
`the
`
`PHILOSOPHY Peel Products.
`
`43.
`
`The goods identification in Applicant’s Israel registration encompasses the
`
`PHILOSOPHY Peel Products.
`
`44.
`
`Applicant’s products and the PHILOSOPHY Peel Products are utilized to address
`
`hyperpigmentation and sun damage, and to rejuvenate skin.
`
`45.
`
`Upon information and belief, Applicant’s Mark is intended to be used in the
`
`United States on and in connection with similar goods sold to the same consumers and in the
`
`same channels of trade as the goods sold by Opposer bearing Opposer’s Mark.
`
`46.
`
`Applicant’s Mark, if registered and used in connection with the goods as recited
`
`in Applicant’s Trademark Application Serial No. 85/108,847, would be confusingly similar in
`
`sight, sound, meaning, commercial impression and manner of use to Opposer’s Mark, and would
`
`
`
`
`- 7 -
`
`
`
`be likely to cause confusion, mistake, or deception as to the affiliation, connection, or association
`
`of Applicant with Opposer, or as to the origin, sponsorship, or approval of Applicant’s goods by
`
`Opposer.
`
`47.
`
`Applicant’s intended use of a white container with a black cap in connection with
`
`Applicant’s Mark (first image below) is likely to cause confusion, mistake, or deception as to the
`
`affiliation, connection, or association of Applicant with Opposer, or as to the origin, sponsorship,
`
`or approval of Applicant’s goods by Opposer (second image is an example of Opposer’s goods),
`
`particularly in view of “Christina” being similar to philosophy’s founder, Cristina Carlino, as
`
`discussed above.
`
`
`
`
`
`48.
`
`Upon information and belief, allowing registration of Applicant’s Mark would
`
`allow Applicant to unfairly trade upon Opposer’s substantial goodwill developed in Opposer’s
`
`Mark.
`
`49.
`
`Opposer would be injured by granting to Applicant a registration for Applicant’s
`
`Mark.
`
`
`
`WHEREFORE, Opposer prays that Application Serial No. 85/108,847 be rejected, that
`
`no registration be issued thereon in accordance with 15 U.S.C. §1052(d), and that this Opposition
`
`be sustained in favor of Opposer.
`
`
`
`
`- 8 -
`
`
`
`
`
`This Notice of Opposition is timely filed within the extension of time granted to Opposer
`
`by the Trademark Trial and Appeal Board. As noted in the electronic filing to which the
`
`document is attached, the undersigned has authorized payment by deposit account of the filing
`
`fee of $300.00 for opposing an application in one class in accordance with 37 C.F.R. §2.6(a)(17).
`
`Respectfully submitted,
`
`SNELL & WILMER L.L.P.
`
`
`
`By: /Sid Leach/
`Sid Leach
`David G. Barker
`One Arizona Center
`400 East Van Buren
`Phoenix, Arizona 85004-2202
`Tel. (602) 382-6377
`Attorneys for Opposer
` philosophy, inc.
`
`
`
`
`
`Dated: August 3, 2011
`
`CERTIFICATE OF SERVICE
`
`I certify that on August 3, 2011, I caused a copy of the foregoing document to be served
`
`
`
`by first class United States mail and by International Federal Express delivery on the Applicant’s
`
`correspondence address of record with the USPTO:
`
`BIO KOR METICS LTD.
`7 Hahashmonaim St.
`Bnei Brak 51262
`Israel
`
`
`
`
`
`
`
`
`
`
`
`By: /David G. Barker/
`
`
`
`
`
`- 9 -
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`EXHIBIT A
`EXHIBIT A
`
`
`
`
`
`
`
`Int. Cl.: 3
`
`Prior U.S. Cls.: 1, 4, 6, 50, 51, and 52
`
`Reg. No. 2,016,208
`United States Patent and Trademark Office , Registered Nov. 12, 1995
`
`TRADEMARK
`
`PRINCIPAL REGISTER
`
`PHILOSOPHY
`
`COSMEDIC CONCEPTS, INC. (ARIZONA COR-
`PORATION), DBA BIOMEDIC CLINICAL
`CARE,
`8757 E. VIA DE COMNIERCIO, SUITE 200
`SCOTTSDALE, AZ 85258
`
`FOR: COSMETICS, NAMELY LIPSTICKS, LIP
`GLOSS, LIP LINER, LIP PENCIL, EYE PENCIL,
`MASCARA, EYE LINER, EYE SHADOW, FACE
`POVVDER, FOUNDATION, AND BLUSH; FOR
`FRAGRANCES, NAMELY PERFUME, TOILET
`WATER AND COLOGNE; FOR FACIAL AND
`BODY SKIN CARE PRODUCTS, NANIELY EX-
`-FOLIATION SCRUBS, WASHES, CLEANSERS,
`LOTIONS, AND CREAMS; FOR SUN CARE
`PRODUCTS,
`NAMELY
`SUNTANNING
`CREAMS, LOTIONS, OILS AND GELS, AFTER
`
`SUN CREAMS AND LOTIONS, SUNBLOCK
`PREPARATIONS, AND SUNSCREENS; FOR
`HAIR CARE PRODUCTS, NAIVIELY SHAMPOO,
`CONDITIONER, AND HAIRSPRAY; FOR MAS-
`SAGE LOTIONS AND OILS; FOR FOOT CARE
`PRODUCTS, NAMELY CREAMS AND LO-
`TIONS; FOR NON-MEDICATED SKIN LIGHT-
`ENING PREPARATIONS ,
`IN CLASS 3
`(US.
`CLS. 1, 4, 6, 50, 51 AND 52).
`FIRST USE
`1-1-1996;
`1- 1-1996.
`
`IN COMMERCE
`
`SN 74—590,215, FILED 10-24-1994.
`
`LAVERNE PREDDIE, EXAMINING ATTOR-
`NEY
`
`
`
`Latest Status Info
`Thank you for your request. Here are the latest results from the TARR web server.
`
`Page 1 of 3
`
`This page was generated by the TARR system on 2011-05-20 15:49:38 ET
`
`Serial Number: 74590215 Assignment Information Trademark Document Retrieval
`
`Registration Number: 2016208
`
`Mark (words only): PHILOSOPHY
`
`Standard Character claim: No
`
`Current Status: The registration has been renewed.
`
`Date of Status: 2006-07-24
`
`Filing Date: 1994-10-24
`
`Transformed into a National Application: No
`
`Registration Date: 1996-11-12
`
`Register: Principal
`
`Law Office Assigned: LAW OFFICE 103
`
`If you are the applicant or applicant's attorney and have questions about this file, please contact the Trademark
`Assistance Center at TrademarkAssistanceCenter@uspto.gov
`
`Current Location: 40S -Scanning On Demand
`
`Date In Location: 2006-09-20
`
`
`LAST APPLICANT(S)/OWNER(S) OF RECORD
`
`1. PHILOSOPHY, INC.
`
`Address:
`PHILOSOPHY, INC.
`3809 East Watkins Street
`PHOENIX, AZ 85034
`United States
`Legal Entity Type: Corporation
`State or Country of Incorporation: Arizona
`
`
`GOODS AND/OR SERVICES
`
`International Class: 003
`Class Status: Active
`cosmetics, namely lipsticks, lip gloss, lip liner, lip pencil, eye pencil, mascara, eye liner, eye shadow, face powder,
`foundation, and blush; for fragrances, namely perfume, toilet water and cologne; for facial and body skin care products,
`namely exfoliation scrubs, washes, cleansers, lotions, and creams; for sun care products, namely suntanning creams,
`lotions, oils and gels, after sun creams and lotions, sunblock preparations, and sunscreens; for hair care products,
`namely shampoo, conditioner, and hairspray; for massage lotions and oils; for foot care products, namely creams and
`
`http://tarr.uspto.gov/tarr?regser=registration&entry=2016208
`
`5/20/2011
`
`
`
`Page 2 of 3
`
`Latest Status Info
`lotions; for non-medicated skin lightening preparations
`Basis: 1(a)
`First Use Date: 1996-01-01
`First Use in Commerce Date: 1996-01-01
`
`
`(NOT AVAILABLE)
`
`
`(NOT AVAILABLE)
`
`
`ADDITIONAL INFORMATION
`
`MADRID PROTOCOL INFORMATION
`
`PROSECUTION HISTORY
`
`NOTE: To view any document referenced below, click on the link to "Trademark Document Retrieval" shown
`near the top of this page.
`
`2011-02-09 - Assignment Of Ownership Not Updated Automatically
`
`2011-02-07 - Assignment Of Ownership Not Updated Automatically
`
`2007-06-04 - TEAS Change Of Correspondence Received
`
`2007-03-21 - Assignment Of Ownership Not Updated Automatically
`
`2006-09-20 - Case File In TICRS
`
`2006-07-24 - First renewal 10 year
`
`2006-07-24 - Section 8 (10-year) accepted/ Section 9 granted
`
`2006-07-19 - Assigned To Paralegal
`
`2006-04-20 - Combined Section 8 (10-year)/Section 9 filed
`
`2006-04-20 - TEAS Section 8 & 9 Received
`
`2002-10-14 - TEAS Change Of Correspondence Received
`
`2002-01-10 - Section 8 (6-year) accepted & Section 15 acknowledged
`
`2001-11-16 - Section 8 (6-year) and Section 15 Filed
`
`1996-11-12 - Registered - Principal Register
`
`1996-08-19 - Allowed for Registration - Principal Register (SOU accepted)
`
`1996-08-09 - Assigned To Examiner
`
`1996-07-26 - Statement Of Use Processing Complete
`
`1996-07-26 - Extension 1 granted
`
`
`http://tarr.uspto.gov/tarr?regser=registration&entry=2016208
`
`5/20/2011
`
`
`
`Page 3 of 3
`
`Latest Status Info
`1996-04-24 - Use Amendment Filed
`
`1996-04-24 - Extension 1 filed
`
`1995-10-24 - NOA Mailed - SOU Required From Applicant
`
`1995-08-01 - Published for opposition
`
`1995-06-30 - Notice of publication
`
`1995-04-14 - Approved For Pub - Principal Register
`
`1995-04-03 - Examiner's amendment mailed
`
`1995-03-10 - Assigned To Examiner
`
`
`ATTORNEY/CORRESPONDENT INFORMATION
`
`Attorney of Record
`MARK A. CARLINO
`
`Correspondent
`Mark A. Carlino
`Law Office of Mark A. Carlino, P.C.
`Suite 103/PMB 617
`28150 N. Alma School Pkwy
`Scottsdale AZ 85262
`Phone Number: (480) 473-0286
`Fax Number: (480) 473-0309
`
`
`http://tarr.uspto.gov/tarr?regser=registration&entry=2016208
`
`5/20/2011
`
`
`
`Int. Cl.: 18
`
`Prior U.S. Cls.: 1, 2, 3, 22, and 41
`United States Patent and Trademark Office
`
`Reg. No. 2,214,968
`Registered Dec.29,1998
`
`TRADEMARK
`
`PRINCIPAL REGISTER
`
`PHILOSOPHY
`
`INC.
`
`(ARIZONA CORPORA-
`
`PHILOSOPHY,
`TION)
`4602 EAST HAMMOND LANE
`PHOENIX, Az 35034 ASSIGNEE OF COSMEDIC
`CONCEPTS,
`INC.
`(ARIZONA CORPORA-
`TION), DBA PHILOSOPHY VOLUME 1,
`TEMPE, Az 35231
`
`FOR: TRUNKS AND TRAVELLING BAGS;
`UMBRELLAS AND PARASOLS , IN CLASS 18
`(U.S. CLS. 1, 2, 3, 22 AND 41).
`FIRST USE
`9—1—1997;
`.
`944997-
`
`IN COMMERCE
`
`SN 75—082,662, FILED 4-2-1996.
`
`JACQUELINE A. LAVINE, EXAMINING AT-
`TORNEY
`
`
`
`Latest Status Info
`Thank you for your request. Here are the latest results from the TARR web server.
`
`Page 1 of 3
`
`This page was generated by the TARR system on 2011-05-20 15:53:54 ET
`
`Serial Number: 75082662 Assignment Information Trademark Document Retrieval
`
`Registration Number: 2214968
`
`Mark (words only): PHILOSOPHY
`
`Standard Character claim: No
`
`Current Status: The registration has been renewed.
`
`Date of Status: 2008-07-25
`
`Filing Date: 1996-04-02
`
`Transformed into a National Application: No
`
`Registration Date: 1998-12-29
`
`Register: Principal
`
`Law Office Assigned: LAW OFFICE 109
`
`If you are the applicant or applicant's attorney and have questions about this file, please contact the Trademark
`Assistance Center at TrademarkAssistanceCenter@uspto.gov
`
`Current Location: 830 -Post Registration
`
`Date In Location: 2008-07-25
`
`
`LAST APPLICANT(S)/OWNER(S) OF RECORD
`
`1. PHILOSOPHY, INC.
`
`Address:
`PHILOSOPHY, INC.
`3809 East Watkins Street
`Phoenix, AZ 85034
`United States
`Legal Entity Type: Corporation
`State or Country of Incorporation: Arizona
`
`
`GOODS AND/OR SERVICES
`
`International Class: 018
`Class Status: Active
`travelling bags
`Basis: 1(a)
`First Use Date: 1997-09-01
`First Use in Commerce Date: 1997-09-01
`
`
`http://tarr.uspto.gov/tarr?regser=registration&entry=2214968
`
`5/20/2011
`
`
`
`Latest Status Info
`
`(NOT AVAILABLE)
`
`
`(NOT AVAILABLE)
`
`
`ADDITIONAL INFORMATION
`
`MADRID PROTOCOL INFORMATION
`
`PROSECUTION HISTORY
`
`Page 2 of 3
`
`NOTE: To view any document referenced below, click on the link to "Trademark Document Retrieval" shown
`near the top of this page.
`
`2011-02-09 - Assignment Of Ownership Not Updated Automatically
`
`2011-02-07 - Assignment Of Ownership Not Updated Automatically
`
`2008-07-25 - First renewal 10 year
`
`2008-07-25 - Section 8 (10-year) accepted/ Section 9 granted
`
`2008-06-27 - Assigned To Paralegal
`
`2008-06-11 - TEAS Section 8 & 9 Received
`
`2007-07-25 - Case File In TICRS
`
`2007-05-29 - TEAS Change Of Correspondence Received
`
`2007-03-21 - Assignment Of Ownership Not Updated Automatically
`
`2004-03-18 - Section 8 (6-year) accepted & Section 15 acknowledged
`
`2004-01-20 - Section 8 (6-year) and Section 15 Filed
`
`2004-01-20 - TEAS Section 8 & 15 Received
`
`2002-10-14 - TEAS Change Of Correspondence Received
`
`1998-12-29 - Registered - Principal Register
`
`1998-11-02 - Allowed for Registration - Principal Register (SOU accepted)
`
`1998-10-13 - Statement Of Use Processing Complete
`
`1998-10-13 - Extension 1 granted
`
`1998-09-16 - Use Amendment Filed
`
`1998-09-16 - Extension 1 filed
`
`1998-03-17 - NOA Mailed - SOU Required From Applicant
`
`1997-12-23 - Published for opposition
`
`http://tarr.uspto.gov/tarr?regser=registration&entry=2214968
`
`5/20/2011
`
`
`
`Page 3 of 3
`
`Latest Status Info
`
`1997-11-21 - Notice of publication
`
`1997-10-28 - Approved For Pub - Principal Register
`
`1997-09-09 - Communication received from applicant
`
`1996-12-02 - Non-final action mailed
`
`1996-11-21 - Assigned To Examiner
`
`1996-10-30 - Assigned To Examiner
`
`1996-08-27 - Assigned To Examiner
`
`1996-08-16 - Assigned To Examiner
`
`
`ATTORNEY/CORRESPONDENT INFORMATION
`
`Attorney of Record
`MARK A CARLINO
`
`Correspondent
`MARK A CARLINO
`Law Office of Mark A. Carlino, P.C.
`Suite 103/PMB 617
`28150 N. Alma School Pkwy
`Scottsdale AZ 85262
`Phone Number: (480) 683-0286
`Fax Number: (480) 683-0309
`
`
`http://tarr.uspto.gov/tarr?regser=registration&entry=2214968
`
`5/20/2011
`
`
`
`Int. Cl.: 41
`
`Prior U.S. Cls.: 100, 101, and 107
`
`Reg. No. 2,269,341
`
`United States Patent and Trademark Office
`
`Registered Aug. 10, 1999
`
`SERVICE MARK
`PRINCIPAL REGISTER
`
`PHILOSOPHY
`
`INC.
`
`(ARIZONA CORPORA-
`
`PHILOSOPHY,
`TION)
`4602 EAST HAMMOND LANE
`PHOENIX, Az 85034 BY ASSIGNMENT COSME-
`DIC CONCEPTS, INC. (ARIZONA CORPORA-
`TION), DBA PHILOSOPHY VOLUME 1,
`TEMPE, AZ 35231
`
`AND SKIN CARE; ENTERTAINMENT IN THE
`NATURE OF AWARD CEREMONIES,
`IN
`CLASS 41 (U.S. CLS. 100, 101 AND I07).
`FIRST USE
`3-15-1999;
`IN COMMERCE
`3-15-1999.
`
`SN 75—082,661, FILED 4—2—1996.
`
`SEMINARS AND
`EDUCATIONAL
`FOR:
`WORKSHOPS IN THE FIELD OF COSMETICS
`
`JACQUELINE A. LAVINE, EXAMINING AT-
`TORNEY
`
`
`
`Latest Status Info
`Thank you for your request. Here are the latest results from the TARR web server.
`
`Page 1 of 3
`
`This page was generated by the TARR system on 2011-05-20 15:54:12 ET
`
`Serial Number: 75082661 Assignment Information Trademark Document Retrieval
`
`Registration Number: 2269341
`
`Mark (words only): PHILOSOPHY
`
`Standard Character claim: No
`
`Current Status: The registration has been renewed.
`
`Date of Status: 2009-01-16
`
`Filing Date: 1996-04-02
`
`Transformed into a National Application: No
`
`Registration Date: 1999-08-10
`
`Register: Principal
`
`Law Office Assigned: LAW OFFICE 109
`
`If you are the applicant or applicant's attorney and have questions about this file, please contact the Trademark
`Assistance Center at TrademarkAssistanceCenter@uspto.gov
`
`Current Location: 830 -Post Registration
`
`Date In Location: 2009-01-16
`
`
`LAST APPLICANT(S)/OWNER(S) OF RECORD
`
`1. PHILOSOPHY, INC.
`
`Address:
`PHILOSOPHY, INC.
`3809 East Watkins Street
`PHOENIX, AZ 85034
`United States
`Legal Entity Type: Corporation
`State or Country of Incorporation: Arizona
`
`
`GOODS AND/OR SERVICES
`
`International Class: 041
`Class Status: Active
`educational seminars and workshops in the field of cosmetics and skin care; entertainment in the nature of award
`ceremonies
`Basis: 1(a)
`First Use Date: 1999-03-15
`First Use in Commerce Date: 1999-03-15
`
`http://tarr.uspto.gov/tarr?regser=registration&entry=2269341
`
`5/20/2011
`
`
`
`Latest Status Info
`
`
`(NOT AVAILABLE)
`
`
`(NOT AVAILABLE)
`
`
`ADDITIONAL INFORMATION
`
`MADRID PROTOCOL INFORMATION
`
`PROSECUTION HISTORY
`
`Page 2 of 3
`
`NOTE: To view any document referenced below, click on the link to "Trademark Document Retrieval" shown
`near the top of this page.
`
`2011-02-09 - Assignment Of Ownership Not Updated Automatically
`
`2011-02-07 - Assignment Of Ownership Not Updated Automatically
`
`2009-01-16 - First renewal 10 year
`
`2009-01-16 - Section 8 (10-year) accepted/ Section 9 granted
`
`2009-01-15 - Assigned To Paralegal
`
`2009-01-13 - TEAS Section 8 & 9 Received
`
`2007-05-29 - TEAS Change Of Correspondence Received
`
`2007-03-21 - Assignment Of Ownership Not Updated Automatically
`
`2006-08-22 - Case File In TICRS
`
`2006-04-21 - Section 8 (6-year) accepted & Section 15 acknowledged
`
`2006-04-21 - Assigned To Paralegal
`
`2004-09-23 - Section 8 (6-year) and Section 15 Filed
`
`2004-09-23 - TEAS Section 8 & 15 Received
`
`2002-10-14 - TEAS Change Of Correspondence Received
`
`1999-08-10 - Registered - Principal Register
`
`1999-05-20 - Allowed for Registration - Principal Register (SOU accepted)
`
`1999-05-19 - Assigned To Examiner
`
`1999-05-11 - Statement Of Use Processing Complete
`
`1999-05-11 - Extension 1 granted
`
`1999-04-20 - Use Amendment Filed
`
`
`http://tarr.uspto.gov/tarr?reg
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