Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA605331
`ESTTA Tracking number:
`05/20/2014
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91215360
`Defendant
`Zen Spa Enterprises Inc.
`MATTHEW H. SWYERS
`THE TRADEMARK COMPANY
`344 MAPLE AVE W STE 151
`VIENNA, VA 22180-5612
`
`mtrelles@pmalaw.com
`Answer
`MARIA D. TRELLES
`mtrelles@pmalaw.com, pcampos@pmalaw.com
`/MARIA D. TRELLES/
`05/20/2014
`DOCSLIB-
`#355271-v1-ANSWER_TO_OPPOSITION_-SKINTIMES_CLASS_5.pdf(18624
`bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`
`ESTTA605331
`ESTTA Tracking number:
`05/20/2014
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91215360
`Defendant
`Zen Spa Enterprises Inc.
`MATTHEW H. SWYERS
`THE TRADEMARK COMPANY
`344 MAPLE AVE W STE 151
`VIENNA, VA 22180-5612
`
`mtrelles@pmalaw.com
`Answer
`MARIA D. TRELLES
`mtrelles@pmalaw.com, pcampos@pmalaw.com
`/MARIA D. TRELLES/
`05/20/2014
`DOCSLIB-
`#355271-v1-ANSWER_TO_OPPOSITION_-SKINTIMES_CLASS_5.pdf(18624
`bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`EVEREADY BATTERY COMPANY, INC.,
`
`Opposer,
`
`v.
`
`ZEN SPA ENTERPRISES, INC.,
`
`Applicant.
`
`Opposition No.: 91215360
`
`Mark: SKINTIMES
`
`Serial No. 85/549571
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`Published: November 12, 2013
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`
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`APPLICANT’S ANSWER TO NOTICE OF OPPOSITION
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`Applicant Zen Spa Enterprises, Inc. (“Applicant”), through its undersigned attorneys, hereby
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`submits its Answer to the Notice of Opposition filed by Eveready Battery Company, Inc.
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`(“Opposer”) dated March 11, 2014 as follows:
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`1.
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`Applicant lacks sufficient knowledge or information to form a belief as to the
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`truth or falsity of the allegations in Paragraph 1 and therefore denies such allegations.
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`2.
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`Applicant lacks sufficient knowledge or information to form a belief as to the
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`truth or falsity of the allegations in Paragraph 2 and therefore denies such allegations.
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`3.
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`Applicant admits that Opposer owns the following U.S. trademark registrations
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`and pending U.S. trademark application for the SKINTIMATE mark: SKINTIMATE Reg. No.
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`1906256, SKINTIMATE Reg. No. 2058439, SKINTIMATE SIGNATURE SCENTS Reg. No.
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`3754697, SKINTIMATE Reg. No. 3967563 and SKINTIMATE Serial No. 85/590932. The
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`remaining allegations of Paragraph 3 of the Opposition state legal conclusions of the Opposer, to
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`which no answer is required. To the extent that further response is necessary, Applicant denies
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`the remaining allegations in Paragraph 3.
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`4.
`
`Applicant denies the allegations of Paragraph 4 of the Opposition.
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`
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`5.
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`Applicant admits that on February 22, 2012, Applicant filed an application to
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`register the SKINTIMES mark in connection with “Anti-inflammatories; Anti-itch cream; Anti-
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`itch ointment; Antibacterial cleaners; Antibacterial hand lotions; Antibacterial handwash;
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`Antibacterial pharmaceuticals; Antibacterial spray; Anticoagulants; Antifungal preparations;
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`Antimicrobial preservatives for cosmetics and pharmaceuticals; Antimicrobials for dermatologic
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`use; Antiseptics; Antivirals” in International Class 005 (“SKINTIMES mark”). Said application
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`has already been approved by the USPTO, which did not find any conflict between the
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`SKINTIMES mark and the pending or registered SKINTIMATE applications or registrations.
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`Further, as per the application, the date of first use of the SKINTIMES mark is at least as of
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`August 1, 2011.
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`6.
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`The allegations of Paragraph 6 of the Opposition state legal conclusions of the
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`Opposer, to which no answer is required. To the extent that further response is necessary,
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`Applicant denies the allegations in Paragraph 6.
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`Affirmative Defenses
`
`1.
`
`To the extent not previously admitted or denied, Applicant denies the remainder
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`of the averments of the Notice of Opposition.
`
`2.
`
`Applicant affirmatively alleges that the Notice of Opposition fails to state a claim
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`upon which relief may be granted.
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`3.
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`Applicant’s registration of Applicant’s mark does not create a likelihood of
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`confusion among consumers that Applicant’s goods are offered by, are sponsored by, or are
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`otherwise endorsed by Opposer. Nor does Applicant’s use or registration of Applicant’s mark
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`create a likelihood that consumers falsely will believe that Applicant and Opposer are affiliated
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`in any way.
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`
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`2
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`4.
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`Applicant affirmatively alleges that Applicant’s SKINTIMES mark differs in
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`terms of sight, sound, and meaning from Opposer’s claimed mark(s) and has a distinct
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`commercial impression from Opposer’s claimed mark(s). To begin with, the names of the marks
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`are distinctive from each other and each name is designed to evoke different thoughts or images
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`in consumers. The SKINTIMES name, for example, suggests a reference to the word time, which
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`is apt for a mark that focuses on beauty and spa-related goods. The SKINTIMATE name, on the
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`other hand, is clearly a play on the word intimate, suitable for a mark that specializes in shaving
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`products.
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`5.
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`Further, even though both marks are related to personal care goods, they
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`specialize in products for different types of personal needs. Applicant’s mark focuses on high
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`end spa-related products such as face and body lotions, skin masks and sun care products.
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`Opposer’s mark, meanwhile, focuses exclusively on products used for shaving, such as shave
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`preparations, creams and gels. Applicant’s mark is also solely used, marketed, and distributed in
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`select upscale spas, while Opposer’s mark is mainly sold in retail chains, grocery stores, mass
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`club stores, drugstores and convenience stores. There is, therefore, no likelihood of confusion
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`between the SKINTIMES mark and the SKINTIMATE mark.
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`6.
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`Applicant affirmatively alleges that it is currently using its mark and that it has
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`developed
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`its global
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`recognition and goodwill. To
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`this effect, Applicant owns
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`registrations/applications for the SKINTIMES mark throughout the world, particularly in Great
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`Britain, Northern Ireland, Spain, Russia, and Singapore, as well as, of course, the pending
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`registration at issue here in the United States.
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`7.
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`Applicant affirmatively alleges that Opposer has and will not suffer any damages
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`as a result of the registration of the SKINTIMES mark.
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`
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`3
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`
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`8.
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`Applicant affirmatively alleges that Opposer is consequently barred from
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`opposing Applicant’s application by laches, acquiescence and/or estoppel.
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`9.
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`Applicant reserves the right to assert any and all other affirmative defenses of
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`which it becomes aware during the pendency of this matter.
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`WHEREFORE, Applicant prays that Opposer’s Notice of Opposition be dismissed and
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`that judgment be entered in favor of Applicant.
`
`DATE: May 20, 2014
`
`
`
`Respectfully submitted,
`
`PIETRANTONI MENDEZ & ALVAREZ LLC
`Attorneys for Zen Spa Enterprises, Inc.
`Popular Center, 19th Floor
`208 Ponce de León Ave.
`San Juan, Puerto Rico, 00918
`Tel: (787) 274-1212
`Fax: (787) 274-1470
`
` S/ NESTOR M. MÉNDEZ GÓMEZ
`Néstor M. Méndez Gómez
`nmendez@pmalaw.com
`
` S/ MARÍA DOLORES TRELLES HERNÁNDEZ
`María Dolores Trelles Hernández
`mtrelles@pmalaw.com
`
`S/ FRANCES R. PESQUERA RIVERA
`Frances R. Pesquera Rivera
`fpesquera@pmalaw.com
`
`
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`4
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`#355271-v1
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`CERTIFICATE OF SERVICE
`
`
`
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`I hereby certify that a copy of the foregoing has been served upon the following, at their
`address record by regular mail or email (by agreement only) on this date.
`
`Thomas A. Polcyn
`Matthew A. Braunel
`Hadi S. Al-Shathir
`THOMPSON COBURN LLP
`One US Bank Plaza
`St. Louis, Missouri 63101
`(314) 552-6000
`(314) 552-7000 (fax)
`tpolcyn@thompsoncoburn.com
`mbraunel@thompsoncoburn.com
`hal-shathir@thompsoncoburn.com
`
`
`
`
`
`S/ NESTOR M. MÉNDEZ GÓMEZ
`
`5
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