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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`COFINLUXE,
`
`Opposer,
`
`Opposition No.
`
`V.
`
`BERKANA NATURALS, SRL
`
`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 CAFESSENCE for anti-aging toner; astringents for
`
`cosmetic purposes; bar soap; bath and shower gels and salts
`
`not for medical purposes; bath beads; bath gels; bath lotion;
`
`bath milks; bath oils for cosmetic purposes; bath pearls; bath
`
`soaps; bathing lotions; beauty creams; beauty lotions; beauty
`
`soap; body and beauty care cosmetics; body lotions; cosmetic
`
`preparations, namely, firming lotions; cosmetic products in
`
`703 837-9600
`
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`LAW OFFICES
`
`12422/2611!SWILSO
`011C:6404
`
`00000003 85305991
`300.00 OP (cid:9)
`
`1
`
`111111111111111111111114111111411111111111E
`12•19-2011
`
`U.S. Patent U. TMEif 0/TM Mall F.cp U.#01
`
`▪
`

`
`the form of aerosols for skincare (sic.); cosmetic soaps;
`
`cosmetic sun milk lotions; cosmetic sun tan lotions; essential
`
`oils; eye lotions; face and body lotions; face milk and
`
`lotions; facial lotion; hare care lotions; hair conditioners;
`
`hair oils; liquid soaps; non-medicated foot lotions;
`
`nutritional oils for cosmetic purposes; perfumed soap; scented
`
`bathing salts; scented oils; shampoos; shaving lotions; shower
`
`and bath foam; shower and bath gel; skin conditioners; skin
`
`lotions; skin toners and sun-block lotions in class 3, Serial
`
`No. 85/305,991, filed April 27, 2011 by Berkana Naturals, SRL
`
`and published for Opposition on September 13, 2011, Cofinluxe,
`
`a French Company, having its principal place of business at 6
`
`rue Anatole de la Forge, 75017, Paris, France, believes that
`
`it would be damaged by such registration and hereby opposes
`
`registration of said alleged trademark as it applies to the
`
`goods in Class 3 set forth therein.
`
`Opposer has obtained an extension of time through January
`
`11, 2012 in which to file this Notice of Opposition.
`
`2
`
`

`
`As grounds for the opposition, it is alleged that:
`
`1. Applicant, Berkana Naturals, SRL, is on information and
`
`belief, a corporation of Costa Rica with an address at Adpo
`
`174 Zona 2150, San Jose, Costa Rica, and seeks to register the
`
`trademark CAF ESSENCE for a variety of lotions and cosmetics in
`
`Class 3, as set forth in the application here opposed. The
`
`application was filed on April 27, 2011 based upon an intent-
`
`to-use the mark in commerce. There has been no subsequent
`
`claim of actual use of the mark. The application was
`
`published on September 13, 2011 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
`
`

`
`3. Opposer or its predecessors in interest have used their
`
`well - recognized trademarks CAFE and Design, CAFÉ CAFÉ PURO,
`
`CAFE DE PARIS and EXPRESSO PARFUMs CAFE on cosmetic goods in
`
`many countries and in the United States marketplace. Opposer
`
`has used its CAFE various marks 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.'
`
`5. Opposer's registration identified in Paragraph 4, supra,
`
`covers perfumes and toilet waters in Class 3.
`
`1 Certified copies showing status and title of each of
`Opposer's registrations will be introduced during the
`trial phase of this proceeding.
`
`4
`
`

`
`6. Opposer's mark CAFE CAFE PURO is the subject of United
`
`States Trademark Registration No. 2,785,628, registered on
`
`November 25, 2003 and is in full force and effect. This
`
`registration covers soaps for personal use; essential oils
`
`used for manufacture of 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 EXPRESSO PARFUMS CAFE is the subject of
`
`allowed United States Trademark application Serial No.
`
`85/125,618, filed September 9, 2010 and published on June 7,
`
`2011. This allowed application registration covers soaps;
`
`perfumes; essential oils for personal use; beauty masks;
`
`shaving preparations; cosmetics; hair lotions; depilatories;
`
`make-up and make-up removing preparations and lipsticks in
`
`Class 3.
`
`5
`
`

`
`8. Opposer's mark CAFE DE PARIS is the subject of United
`
`States Trademark Registration No. 1,509,760, registered on
`
`October 25, 1988 and is in full force and effect and covers
`
`perfumes, colognes, toilet water and deodorants in Class 3.
`
`9. Opposer packages its goods in distinctive containers and
`
`the marks of the Opposer are prominently displayed on such
`
`packaging.
`
`10. 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.
`
`11. Opposer's CAFE goods are advertised in various media
`
`distributed throughout the United States.
`
`12. 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
`
`6
`
`

`
`Applicant's mark is intended to be used in conjunction with
`
`Class 3 cosmetic products that are identical or closely
`
`related to the goods of the Opposer.
`
`13. The marks herein 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. The mark of the Applicant can be
`
`understood by the consumer to refer to "the essence of Cafe".
`
`14.
`
`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
`
`7
`
`

`
`objection or fault found with Applicant's cosmetics sold under
`
`the CAFESSENCE 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.
`
`15.
`
`In view of Opposer's Registrations noted herein, priority
`
`is not an issue in this opposition
`
`16. 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
`
`85/305,991 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.
`
`8
`
`

`
`December 19, 2011
`
`By
`
`Respectfully submitted,
`
`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
`ddennison@dennisonlaw.com
`
`CERTIFICATE OF SERVICE
`
`This is to certify that a copy of the above Notice of
`
`Opposition was served upon Applicant's listed correspondent,
`
`Drew Alia, Esq., c/o Alia Law Group, 1518 Walnut Street, 15'
`
`Floor, Suite 1506, Philadelphia, PA 19102, by first class mail
`
`with proper postage affixed this 19th day of December, 2011.
`
`Donald L. Dennison
`
`9

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