Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA515090
`ESTTA Tracking number:
`01/09/2013
`
`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
`
`Blinc, Inc.
`01/09/2013
`
`1141 South Rogers CircleSuite 9
`Boca Raton, FL 33487
`UNITED STATES
`
`Attorney
`information
`
`Mary E. Goulet
`Whitham, Curtis, Christofferson & Cook, P.C.
`11491 Sunset Hills Rd.Suite 340
`Reston, VA 20190
`UNITED STATES
`mary@wcc-ip.com
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`85665578
`01/09/2013
`
`Publication date
`Opposition
`Period Ends
`
`09/11/2012
`01/09/2013
`
`Sheffield, Simone
`P.O. Box 215
`Palm Spring, CA 92263
`UNITED STATES
`Goods/Services Affected by Opposition
`
`Class 035. First Use: 2011/10/15 First Use In Commerce: 2012/02/18
`All goods and services in the class are opposed, namely: Independent sales representatives in the
`field of Cosmetics
`
`Grounds for Opposition
`
`False suggestion of a connection
`Priority and likelihood of confusion
`Dilution
`
`Trademark Act section 2(a)
`Trademark Act section 2(d)
`Trademark Act section 43(c)
`
`Mark Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`Registration Date
`
`3049018
`
`01/24/2006
`
`Word Mark
`
`BLINC
`
`Application Date
`
`06/09/2004
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`Attachments
`
`NONE
`
`Class 003. First use: First Use: 1999/04/00 First Use In Commerce: 1999/04/00
`Cosmetics, [ shampoos, conditioners, body wash ]
`Class 008. First use: First Use: 2002/06/00 First Use In Commerce: 2002/06/00
`Battery-powdered eyelash curlers; hand operated instruments for cosmetic
`purposes, namely, tweezers
`
`78432484#TMSN.jpeg ( 1 page )( bytes )
`Notice of Opposition (2013-01-09).pdf ( 6 pages )(229038 bytes )
`Notice of Opposition, Exhibit 1 (2013-01-09).pdf ( 2 pages )(28235 bytes )
`Notice of Opposition, Exhibit 2 - scanned (2013-01-09).pdf ( 17 pages )(3950635
`bytes )
`Notice of Opposition, Exhibit 3 - scanned (2013-01-09).pdf ( 13 pages )(4413745
`bytes )
`
`The undersigned hereby certifies that a copy of this paper has been served upon all parties, at their address
`record by USPS Express Mail Post Office to Addressee on this date.
`
`Certificate of Service
`
`Signature
`Name
`Date
`
`/Robert N. Cook/
`Robert N. Cook
`01/09/2013
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`BLINC, INC.,
`
`v.
`
`Opposer,
`
`SIMONE SHEFFIELD,
`
`Applicant.
`
`
`
`Opposition No.:
`
`NOTICE OF OPPOSITION
`
`Opposer Blinc, Inc. has reason to believe that it will be harmed if registration of the mark
`
`BLING BRIGADE is granted to Applicant Simone Sheffield based on Application Serial No.
`
`85665578 (filed June 29, 2012). Accordingly, Blinc, Inc. hereby opposes registration pursuant
`
`to 15 U.S.C. § 1063 and 37 C.F.R. § 2.101.
`
`I.
`
`THE PARTIES
`
`Opposer Blinc, Inc.
`
`1.
`
`Opposer Blinc, Inc., a corporation organized and existing under the laws of the
`
`State of Delaware, is located at 1141 South Rogers Circle, Suite 9, Boca Raton, Florida 33487.
`
`On January 24, 2006, Blinc, Inc. was granted a registration on the Principal Register for the
`
`standard character mark BLINC (U.S. Trademark Registration No. 3049018). A true and correct
`
`copy of the BLINC registration is attached hereto as Exhibit 1.
`
`Applicant
`
`2.
`
`On information and belief, Applicant Simone Sheffield is an individual resident of
`
`the State of California with a business address at P.O. Box 215, Palm Spring, California 92263.
`
`

`
`II.
`
`BACKGROUND
`
`The Application
`
`3.
`
`On June 29, 2012, Applicant filed an Application under Section 1(a) of the
`
`Trademark Act, 35 U.S.C. § 105 1(a), to register the mark BLING BRIGADE on the Principal
`
`Register in connection with “Independent sales representatives in the field of Cosmetics” in
`
`International Class 35 (Application Serial No. 85665578) (the “Application”).
`
`Timeliness of Opposition
`
`4.
`
`The Application was first published for opposition in the Official Gazette dated
`
`September 11, 2012, with the time to file a Notice of Opposition being set to expire on
`
`October 11, 2012.
`
`5.
`
`On October 10, 2012, Blinc, Inc. timely filed an extension of time for 90 days to
`
`oppose the Application. The extension of time was granted, thus permitting Blinc, Inc. until
`
`January 9, 2013 to file a Notice of Opposition.
`
`Background of Blinc, Inc.
`
`6.
`
`As stated above, Blinc, Inc. was granted registration of the BLINC mark on the
`
`Principal Register on January 24, 2006 (U.S. Trademark Registration No. 3049018), with
`
`Blinc, Inc.’s first use of the BLINC mark being in April, 1999 for goods in International Class 03
`
`and in June 2000 for goods in International Class 08.
`
`7.
`
`The term “BLINC” was coined by Blinc, Inc. as the brand name for a line of
`
`cosmetic products and beauty tools. The BLINC name is arbitrary, fanciful and distinctive in the
`
`cosmetic and beauty industry.
`
`

`
`8.
`
`Blinc, Inc. began selling BLINC cosmetics in 1999 and the BLINC trademark has
`
`been used continuously and exclusively since then on a variety of cosmetic products.
`
`9.
`
`BLINC is a well known trademark throughout the cosmetic and beauty industry as
`
`a high—end brand of cosmetics in the United States and is sold through various online and retail
`
`stores.
`
`10.
`
`BLINC has been, and continues to be, a very successful brand in the cosmetic and
`
`beauty industry, partially due to the substantial funds that have been expended in marketing and
`
`advertising the BLINC products. In addition, many famous magazines have published
`
`(unsolicited) reports on, and coverage of, BLINC products including Harper’s Bazaar, InStyle,
`
`Cosmopolitan, Allure, O The Oprah Magazine, and Elle. An exemplary sample of such
`
`unsolicited reports and coverage is attached hereto as Exhibits 2 and 3.
`
`1 1.
`
`As a result of Blinc, Inc.’s advertising and marketing efforts, as well as the
`
`unsolicited promotions and coverage, the trademark BLINC has acquired significant goodwill
`
`and recognition throughout the cosmetic and beauty industry.
`
`III.
`
`GROUNDS FOR REFUSAL OF REGISTRATION: FALSE SUGGESTION OF A
`
`CONNECTION, PRIORITY/LIKELIHOOD OF CONFUSION, AND DILUTION
`
`12.
`
`Each and every allegation made in Paragraphs l—ll is incorporated by reference as
`
`if fully restated herein.
`
`13.
`
`Applicant’s June 29, 2012 application for registration ofBL1NG BRIGADE under
`
`Section 1(Q) of the Trademark Act, 15 U.S.C. § 105l(a), identifies October 15, 2011 as the date
`
`of first use anywhere and February 18, 2012 as the date of first use in commerce. Blinc, Inc.’s
`
`use of the BLINC mark in commerce predates the Applicant’s use by more than 12 years.
`
`

`
`14.
`
`The services identified in the Application as services in connection with which
`
`Applicant uses the BLING BRIGADE trademark include, “Independent sales representatives in
`
`the field of Cosmetics”, while U.S. Trademark Registration No. 3049018 grants Blinc, Inc. the
`
`right to use the registered BLINC trademark on goods in the field of “Cosmetics” among others.
`
`15.
`
`Applicant’s services thus involve a body of “[i]ndependent sales representatives”
`
`known as a BLING BRIGADE selling goods “in the field of Cosmetics” while Blinc, Inc. uses
`
`the mark BLINC to identify goods in the field of “Cosmetics”.
`
`l6.‘
`
`The “BLING” element of the BLING BRIGADE mark in the Application is
`
`confusingly similar in substance, appearance, sound and pronunciation to Blinc, Inc.’s BLINC
`
`mark, While the “BRIGADE” element of the BLING BRIGADE mark in the Application may be
`
`understood by customers as describing the body of “[i]ndependent sales representatives” selling
`
`“BLING” cosmetics.
`
`False Suggestion of a Connection
`
`17.
`
`Applicant’s BLING BRIGADE mark so resembles Blinc, Inc.’s BLINC mark that
`
`the purchasing public is likely to make a false suggestion of a connection between Blinc, Inc. and
`
`the products of Applicant.
`
`Likelihood of Confusion
`
`18.
`
`Applicant’s BLING BRIGADE mark so resembles Blinc, Inc.’s BLINC mark that
`
`granting registration to Applicant for the BLING BRIGADE trademark is likely to cause
`
`confusion, to cause mistake or to deceive persons in the marketplace, thus resulting in harm and
`
`damage to Blinc, Inc.
`
`

`
`Trademark Dilution
`
`19.
`
`App1icant’s use of the BLING BRIGADE mark on cosmetic products and
`
`cosmetic-related products will dilute Blinc, Inc.’s well-known and distinctive BLINC mark by
`
`lessening the capacity of BLINC to identify and distinguish Blinc, Inc.’s goods, thereby
`
`irreparably damaging Blinc, Inc. and its goodwill in the BLINC mark.
`
`IV.
`
`RELIEF REQUESTED: REFUSAL OF REGISTRATION
`
`WHEREFORE, Blinc, Inc. requests that Application Serial No. 85665578 be refused
`
`registration and that this Notice of Opposition be sustained in favor of Blinc, Inc.
`
`The required Opposition fee in the amount of $300.00 is submitted concurrently herewith.
`
`Please charge any additional fees to Attorney’s Deposit Account No. 50-2041.
`
`Date: January 9, 2013
`
`Respectfully submitted,
`
`{Baas/J» {mm
`
`Robert N. Cook
`
`Mary E. Goulet
`Whitham, Curtis, Christofferson & Cook, P.C.
`11491 Sunset Hills Road, Suite 340
`
`Reston, Virginia 20190
`(703) 787-9400 (voice)
`(703) 787-7557 (fax)
`
`Counsel for Opposer
`BLINC, INC.
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`BLINC, INC.,
`
`Opposer,
`
`
`
`v.
`
`Opposition No.:
`
`SIMONE SHEFFIELD,
`
`Applicant.
`
`CERTIFICATE OF SERVICE
`
`I certify that on January 9, 20l3 I caused a true and correct copy of the foregoing
`
`NOTICE OF OPPOSITION to be sent by Express Mail addressed to:
`
`Simone Sheffield
`
`P.O. Box 215,
`
`Palm Spring, CA 92263
`
`APPLICANT
`
`Respectfully submitted,
`
`
`
`Robert N. Cook
`
`Whitham, Curtis, Christofferson & Cook, P.C.
`
`ll49l Sunset Hills Road, Suite 340
`
`Reston, Virginia 20190
`(703) 787-9400 (voice)
`(703) 787-7557 (fax)
`
`Counsel for Opposer
`BLINC, INC.
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`BLINC, INC.,
`
`v.
`
`Opposer,
`
`SIMONE SHEFFIELD,
`
`Applicant.
`
`Opposition No.: ____________________
`
`NOTICE OF OPPOSITION
`
`EXHIBIT 1
`
`Copy of U.S. Trademark Registration No. 3049018 for BLINC
`
`

`
`Int. Cis.: 3 and 8
`Prior U.S. Cls.: 1, 4, 6, 23, 28, 44, 50, 51 and 52 (cid:9)
`United States Patent and Trademark Office (cid:9)
`TRADEMARK
`PRINCIPAL REGISTER
`
`Reg. No. 3,049,018
`Registered Jan. 24, 2006
`
`LILAC
`
`BLINC INTERNATIONAL INC. (VIRGINIA COR-
`PORATION)
`512 HERNDON PARKWAY
`SUITE G
`HERNDON, VA 20170
`
`FOR: COSMETICS, SHAMPOOS, CONDITION-
`ERS, BODY WASH, IN CLASS 3 (U.S. CLS. 1, 4, 6,
`50, 51 AND 52).
`
`FIRST USE 4-0-1999; IN COMMERCE 4-0-1999.
`
`COSMETIC PURPOSES, NAMELY, TWEEZERS, IN
`CLASS 8 (U.S. CLS. 23, 28 AND 44).
`
`FIRST USE 6-0-2002; IN COMMERCE 6-0-2002.
`
`THE MARK CONSISTS OF STANDARD CHAR-
`ACTERS WITHOUT CLAIM TO ANY PARTICULAR
`FONT, STYLE, SIZE, OR COLOR.
`
`OWNER OF U.S. REG. NO. 2,748,782.
`
`SER. NO. 78-432,484, FILED 6-9-2004.
`
`FOR: BATTERY-POWDERED EYELASH CUR-
`LERS; HAND OPERATED INSTRUMENTS FOR
`
`CAROL SPILS, EXAMINING ATTORNEY
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`Opposer,
`
` BLINC, INC.,
`
`
`Opposition No.2
`
`SIMONE SHEFFIELD,
`
`Applicant.
`
`NOTICE OF OPPOSITION
`
`EXHIBIT 2
`
`Unsolicited Reports and Coverage of the BLINC Brand of Cosmetic Products
`
`

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`own. it repairs dry skin
`in seconds and will never
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`
`

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`In searching the pubiicly accessibie web, we found a webpage of interest and provide a snapshot of it
`below. Please be advised ihai this page. and any images or links in it, may have changed since we created
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`MacKenzie Porterz‘1€“"‘s 5 Favourite Beauty Products .39) Real Style Network - Beauty
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`MacKcnzie P0rtcré€T-‘*'s 5 Favourite Beauty Products /A\» Rcat Style Network - Beauty
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`Summer Beauty: The Best No-Sweat Makeup! Style I Washingt...
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`http://wwunwashingtonizm.cc:>m/articles/style/no-sweat-makeup!
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`Summer Beauty: The Best No—Sweat Makeup
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`s
`-
`Mascara, foundation, eye shadow, and other beauty products that won t melt an
`the Sllmmef heat.
`By Courtney Rubin
`
`MUST HEADS
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`Washington, DC
`Our list of parties, gatas. shows, and events sure
`tonetpyou baa mu to am in sue.
`Top 10 Restaurant Openings of 2012
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`a year that brought us excellent elote, stacked
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`New Year's Eve Dinners Around
`Washington
`Ring in 2013 with a Champagne and caviar can, a
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`A Year in the Life of a Fashion Editor (in
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`Summer Beauty: The Best No-Sweat Makeup I Style I Washiugt...
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`http://ivwwwztshingtonian.eom/artlcies/style/no-s\veat»ntakcup/
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`1- ;§Published July 11,2012
`
`I don’t sweat what I look like at the gym because I sweat so
`much anyway. My propensity toward perspiring—and my
`oily skin’s tendency to eat up makeup five seconds after I
`put it on——means I’ve never considered wearing makeup to
`the gym. But for the past two months I’ve run sprints, done
`pushups, wobbled on a surfboard, and taken a 90-minute
`yoga boot camp in a 1oo—degree roorn—all with a full face of
`makeup. I tried more than 100 products in all——primer,
`. foundation, eyeliner, shadow, mascara, and lipstick.
`
`The works, you might say, so I could test which “melt-free” makeup works——because if a
`product stays on through my workout, chances are it won’t drip or smudge on you during
`Washington’s heat and humidity. (Or, of course, your own workout.)
`
`Here’s what I found: Unlike most foundation, this stuff does what it says.
`
`I tried cat’s eyes and smoky eyes and pretty much every makeup tip I’ve ever read,
`reasoning that if I’m going to be a hot mess~and if it’s all going to slide offanyway—I
`might as well revel in the ridiculousness. But apart from the comedy of sporting cat’s eyes
`at an 8 am spin class, my makeup stayed where I put it.
`
`The expensive products didn’t necessarily work better than the cheap ones, but they
`sometimes felt better. Most of the primers and foundations made me feel as if I were
`wearing a facial mask made of papier maché-—-and within minutes my towel was wearing
`more foundation than I was. Stila Smudge Stick Waterproof Eyeliner made my eyes feel on
`the verge ofteaxs. Ditto Neat 313 Face Saver Gel, a facial “antiperspirant” to which I lost a
`Contact lens after this stuff ended up in my eyes when I got sweaty. (So no, it di(ln’t work.)
`
`Some of My Favorite Melt—Free Products
`1. Clé de Penn Beauté Concealer
`
`I’m not one to spend $70 on concealer I'm pretty sure is overhyped. I tried this one almost
`by accident, hitting the makeup counter when I was out shopping, then catching a eardio
`sculpt class. It made my skin look like a better, airbrushed version of itself. To avoid a
`cakey finish, use your finger to apply it over moisturizer, then set udth powder. $70,
`l)?iE’!l€3}‘:'§.:'.‘i:3ll1.
`
`2. Giorgio Armani Lasting Silk UV Foundation
`
`According to the company, this is designed to handle “extreme” conditions such as hot
`camera lights. It was the only one I tried that stuck by me-—and without feeling like glue. I
`don’t plan on ever wearing foundation at the gym again, but I’ll be trying this on a hot
`summer day when I need the coverage. $59, nordstromcorn.
`
`3. Make Up for Ever HI) Micmfinish Powder
`
`This loose, fine-milled translucent powder gave my skin a lovely, natural finishmonce I
`figured out how to use it. Makeup artist's tip: Pour a tiny amount into the cap and work
`your brush into it. If you can see gobs on the brush, you’re using too much. $32,
`sepliosaeozii.
`
`4. Make Up for Ever Aqua Cream
`
`I tried this eye shadow-some shades of which double as cheek and lip color-l)ecause it’s
`the pick of the Aqualillies, the glamorous synchronized swimmers who are LACS
`pool—party—of-the—moment entertainment (Glee, Justin 'I‘imberlake’s surprise party). I
`didn’t care for it as a cheek and lip color, but it looked and felt gorgeous as a shadow. As
`for its staying power, they’re not kidding about the brand name—and I liked it so much I
`might use it, um, forever. $23, sephora.eon':.
`
`5. Urban Decay 24/7 Waterproof Liquid Eyeliner
`
`Not the easiest to apply-—the brush takes practice to control, and I only discovered thanks
`to Google that you need to shake it first. My reward: some of the richest, most playful
`colors I've seen, including shimmering golds, purples, and greens. There are also the more
`
`
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`Teenage Gifts for the Holidays — for Christmas, Hanukah and
`
`http://wwwpopcosmo.c0m/20I2/1 1/16/teenage—gifts/
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`Teenage Gifts for the holidays {Beauty}
`
`NOV
`1 6
`
`POSTED IN: BEAUTY
`
`We've got a whole list of teenage gifts for the holidays just for you! If you don't have
`your list complete or your Pinterest gage full of ideas, we are here to help (just in
`time for Black Friday and Cyber Monday). Other lists for teenage gifts for the
`holidays will be coming soon!
`For Social Media Mavens:
`
`shoebotztcom
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`ma gum“;
`saoasaeéiaz '
`
`i
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`NORDSTROM
`
`Skylark lipgloss, BIush.com. $19.95
`
`Any teen who is into beauty knows the names Elle and Blair Fowler, but may better
`
`1of7
`
`1/7/13 5:08 PM
`
`

`
`Teenage Gifts for the Holidays — for Christmas, Hanukah and
`
`http://www.popcosmo.com/2012/1l/16/tecnage—gifts/
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`Find us on Facebook
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`20 hours ago
`Fatebcok social plugin
`
`I
`
`know them as AIlThatGIitters21 (Elle) and juicystar07 (Blair). They are sisters who
`post beauty and style videos on YouTube, have almost 2 million subscribers and
`320 million views. They’ve branched out into acting, designing, and now are
`creating a makeup line just in time for the holidays. They sent us their Skylark
`Lipgloss and l was thrilled to try it. Ava, the pinker of the two, was not very flattering
`on me.
`It kind oflooked like I had rubbed pink frosting all over my lips, which
`unfortunately for me, isn’t a good look. But, next I tried on the Sofia Iipgloss, a berry
`color, and it is amazing! The saturation was perfect and it wasn't goopy or too thick.
`The wand on both of the lip glosses picks up a lot of product and is very easy to
`use. Also the color lasts for a very long time, even if you eat or drink. I think the Ava
`lip gloss would look best on blondes, and the Sofia Iipgloss look nice on brunettes
`so it's the perfect set for everyone.
`
`For the Tween:
`
`
`
`Blue Star Bazaar. gglo gahorse mg. $30
`
`When I first moved to the beach in 5th grade, I was looking for fish in the ocean with
`my net. My parents always told me and my brother they would pay us a $1 if we
`caught one. I think he may have caught just one over the years, but I never did.
`Thinking back, I have a sneaking suspicion the $1 /fish was a ruse to simply get us
`to stop bugging them so they could chill and read a book. But, one time I did catch a
`seahorse. I know, it was crazy and I should have gotten $100 for catching it, right?!
`It was a tiny one, and I was dying to keep it, but we decided to throw it back in the
`ocean to be with its mom. I've always thought about it and wondered if I should
`have kept it. Deep down, I'm sure I did the right thing *sigh*.
`
`So, because of actually finding a seahorse (I mean what are the odds?} I love them.
`And I have an obsession with cases and bags. Absolute obsession. I love all
`makeup bags, pencil cases, and purses. And my favorite color is teal, which you
`know if you've ever seen my room! It's covered in teal. Blue Star Bazaar is a
`treasure trove of cuteness that has products for both teens and moms, plus dads!
`But my search ended when I saw this blue seahorse makeup case ($30) by Lolo. It
`was love at first sight since it's beyond cute, and the perfect size for either makeup,
`personal items, or pencils! It's a gorgeous color with the most adorable seahorse on
`the front! although the inside is not waterproof, it is a light color, which I love since it
`makes finding stuff that falls to the bottom so much easier. And I also like the
`contrast of colors between the teal and pink and the patent leather feel of the
`outside of the case. Adorableness. It may not be a word, but it should be.
`
`For a Friend:
`
`20f7
`
`1/7/13 5:08 PM
`
`

`
`Teenage Gifts for the Holidays - for Christmas, Hanukah and
`
`http://www.popcosmo.com/2012/1 1/ 16/teenage—gifts/
`
`
`
`Apple Cider 8. Candy Cane Chapstick limited e