Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA696446
`ESTTA Tracking number:
`09/17/2015
`
`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 ex-
`tension
`Address
`
`Laverana GmbH & Co. KG
`12/09/2015
`
`Am Weingarten 4
`Wennigsen, D-30974
`GERMANY
`
`Attorney informa-
`tion
`
`Susan Neuberger Weller
`Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C.
`701 Pennsylvania Avenue, N.W. Suite 900
`Washington, DC 20004
`UNITED STATES
`snweller@mintz.com, jddib@mintz.com Phone:2025853510
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`86509041
`09/17/2015
`
`Publication date
`Opposition Peri-
`od Ends
`
`08/11/2015
`12/09/2015
`
`Castillo, Marcos
`436 Brook Avenue
`Bronx, NY 10454
`UNITED STATES
`Goods/Services Affected by Opposition
`
`Class 003. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: soaps and detergents; laundry detergent;
`laundry soap; bath soap
`
`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.
`Registration Date
`
`2687717
`
`02/18/2003
`
`Word Mark
`Design Mark
`Description of
`
`LAVERA
`
`NONE
`
`Application Date
`
`02/22/1999
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Mark
`Goods/Services
`
`Class 003. First use: First Use: 0 First Use In Commerce: 0
`COSMETICS, NAMELY, FACE CREAMS AND LOTIONS, SKIN CLEANSERS,
`PERSONAL HYGIENE PRODUCTS, NAMELY, SHOWER GELS, SHAMPOOS
`AND BODY LOTIONS, SUN SCREEN PREPARATIONS;PRODUCTS FOR BA-
`BIES' AND CHILDRENS' CARE, NAMELY, BATHING OILS, SHAMPOOS, SKIN
`OILS AND CREAMS; MEN'S CARE PRODUCTS, NAMELY, SHAVING
`CREAM, AFTER-SHAVE BALMS, SHOWER SHAMPOOS AND DEODOR-
`ANTS; HAIR LOTIONS, DENTIFRICES, [ PERFUME, FOOT CREAMS AND
`LOTIONS; FOOT CARE PRODUCTS, NAMELY, ABRASIVE DEVICES IN THE
`NATURE OF PUMICE STONES, RASPS, OR FILES FOR TREATINGCORNS
`AND CALLUSES, NON-MEDICATED POWDERS AND LIQUIDS FOR
`BATHING FEET, AND NON-ELECRIC MASSAGE DEVICES, SPECIFICALLY,
`DEVICES DESIGNED FOR MASSAGING FEET; ] DECORATIVE COSMETICS,
`NAMELY, TINTED MOISTURIZING CREAMS, MAKEUP, COMPACT FACE
`POWDERS AND ROUGES, COVER-UP STICKS, LIPSTICKS, EYE-
`DECORATING PENCILS AND MASCARA
`Class 005. First use: First Use: 0 First Use In Commerce: 0
`[ NUTRITIONAL SUPPLEMENTS AND VITAMINS ]
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`
`4230293
`
`10/23/2012
`
`LAVERA
`
`Application Date
`
`03/24/2009
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 003. First use: First Use: 1987/11/30 First Use In Commerce: 1999/05/31
`After-shave products, namely, lotions, cologne, balms, creams, emulsions, and
`gels; shaving preparations, namely, foamsand gels; after-sun care products,
`namely, creams, gels, lotions, milks, and oils; age-retardant products, namely,
`gels, creams, and lotions; deodorants for personal use; anti-aging products,
`namely,cleansers, creams, moisturizers, and toners; anti-wrinkle creams; aro-
`matherapy body care products, namely, body lotions, shower gels, shampoos,
`conditioners, non-medicated lip balms, soaps, body polish, body and foot scrub
`and non-medicated foot creams, oils, and sprays; baby skin and hair care
`products, namely, lotions, oils, powders, shampoos, hair conditioners; bath and
`shower products, namely, gels, salts, mineral salts, creams, lotions, oils, and
`soaps in liquid, or gelform not for medical purposes; beauty products, namely,
`creams, gels, lotions, masks, milks, and serums; body and beauty care cosmet-
`ics, namely, body creams, body deodorants, body lotions, body mask creams,
`body mask lotions, body milks, body oils, spray used as a personal deodorant
`and as fragrance, and body washes; cleansing products, namely, creams, milk;
`colognes and perfumes; color cosmetic products, namely, blush, blush pencils,
`chalk for cosmetic use, pencils, eyeliners, eye make-up, eye shadows, eyebrow
`
`

`
`cosmetics, face highlighters, rouges, lip liners, lipsticks, concealers for face and
`body, make-up, creamy face powder, glitter powder, pressed face powder,
`creamy foundation, foundation make-up, loose face powder, mascaras, and
`creamy rouges; cosmetic preparations, namely, preparations against sunburn,
`sun-tan preparations, and sun-protecting preparations; eye skin care products,
`namely, creams, gels, lotions, masks, and make-up removers; facial skin care
`products, namely, creams, milks, lotions, night cream, beautymasks, cleansers,
`creams, emulsions, scrubs, washes; hair care products, namely, conditioners,
`shampoos, hair dressing preparations, lotions, gels, mousse, andsprays; hand
`skin care products, namely, cleaners, creams, soaps, lotions, and scrubs; lip
`care products, namely, balms, creams, and gloss; dental care products, namely,
`dentifrices; essential oils for personal use; exfoliant creams for skin; perfumed
`and scented skin care products, namely, creams, powder, lotions, cream soaps,
`and soaps; skin moisturizing products, namely, creams, milks, and lotions; skin
`clarifiers; skin cleansers; skin fresheners; wrinkle removing skin care prepara-
`tions; wrinkle resistant creams; wrinkle-minimizing cosmetic preparations for top-
`ical facial use
`
`U.S. Application
`No.
`Registration Date
`
`Word Mark
`Design Mark
`
`85824482
`
`NONE
`
`LAVERA
`
`Application Date
`
`01/16/2013
`
`Foreign Priority
`Date
`
`01/16/2013
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 003. First use: First Use: 0 First Use In Commerce: 0
`Non-medicated skin care preparations; beauty preparations, namely, cosmetics;
`non-medicated milks, tonics, lotions, creams, emulsions, and gels for the face
`and body; non-medicated cleansing preparations for the face and body; skin
`astringents for cosmetic purposes; body mist; non-medicated foot soaks, depilat-
`ory creams; pumice stones for personal use; soaps; bubble bath; shower
`creams and gels; non-medicated skin care preparations, namely, skin exfoliating
`products; make-upremoving preparations for the face; talcum powder; sham-
`poos; hair lotions, oils, conditioners and repair preparations; hair dyes; hair
`spray, gel and mousse; hair brighteners; hair mascaras; shaving creams and
`gels; after-shave gels and lotions; perfumery; deodorants for personal use; es-
`sential oils; bath beads; bath oils and salts; cosmetics; skin masks; foundation
`cream; blush; bronzing powder;make up powder; facial shimmer preparations;
`mascara; eyeliners; cosmetic eye and lip pencils; eye shadows; lip balms; lip
`gloss; lipsticks; makeup removing preparations; nail polish; nail forms; false
`nails; nail polish remover; cuticle creams; preparations for strengthening nails;
`non-medicated concealer sticks; body glitter; sun-tanning lotions and creams for
`the face and body; fake tan lotions and creams for the face and body; sunscreen
`creams; after sun lotions and creams for the face and body; Perfumes, eauxde
`toilette; bath and shower gels and salts not for medical purposes; toilet soaps;
`cosmetics, in particular creams, milks, lotions, gels and powders for the face,
`
`

`
`body and hands; cosmetics, namely, sun-tanning milks, gels and oils and after-
`sun preparations; make-up preparations; shampoos; gels, mousses, balms and
`preparations in aerosol form for hairdressing and hair care; hair lacquers; hair-
`coloring and hair-decolorizing preparations; preparations for waving and setting
`hair; cosmetics, decorative cosmetics; face creams and lotions; skin-cleansing
`lotions and creams, hand and body lotionsand creams; tinted moisturizing
`creams,make-up, foundation, face powder and rouge; blemish stick, lip pencils,
`eyeliner pens and mascara, eye shadow; sun carepreparations; foot-care pre-
`parations; foot creams and lotions; exfoliants for skin; abrasive implements in
`the form of pumice stones; non-medicated powders andlotions for foot spas;
`non-medicated body care products, namely, creams, lotions and polish; shower
`gels; hair care products, namely, shampoos, hair lotions, conditioning rinses,
`conditioners, combined shampoo and conditioner, hair sprays,styling mousse
`and gels; hair dyes; baby and infant care products, namely, babycreams, baby
`shampoos, and baby toothpaste; bath oils; skin oils and creams; anti-wrinkle
`creams; massage oils; grooming products for men, namely, shaving cream,
`after-shave balms; products for oral hygiene, not for medical purposes, namely,
`toothpaste; preparations for the mouth and for cleaning the mouth, breath-
`freshening and mouth-freshening preparations, namely, mouth sprays, mouth
`rinses, dentifrices, and toothpaste; antiperspirants
`Class 005. First use: First Use: 0 First Use In Commerce: 0
`Pharmaceutical products, namely, for the treatment of neurodermitis, acne,
`skinirritations, skin care problems; health-care products, namely, vitamins and
`dietary supplements; medicated lubricants; dietetic foods, namely, crackers,
`sweets, yogurts adapted for medical use; sanitary preparations for medical use;
`vitamin preparations; disinfectants for hygiene purposes; royal jelly for medical
`purposes; herbal teas for medicinal purposes; natural remedy preparations,
`namely, corn remedies for the treatment of hormonal and chemical imbalances,
`sleep disorders, skin care problems; headache pencils; lactose for medical pur-
`poses; milkinggrease for medical purposes; dietetic substances and beverages
`for babies, infants and children, namely, baby food and electrolyte beverages for
`medical purposes; nutritional supplements that may contain proteins, glucides,
`lipids, peptides and/or fibres, or micronutrients such as vitamins and/or minerals
`and/or aminoacids and/or fatty acids and/or plants,and/or vegetable extracts
`and/or purified molecules extracted from vegetables, for beauty and skin, body,
`face, hair ornail care, in the form of capsules, tablets, ampules, yeast, powders,
`bars, creams or drinks, for medical and/or cosmetics and/or food purposes; nu-
`tritional additives for medical purposes in the nature of natural food extracts de-
`rived frommeat, fish, poultry and game, meat extracts, fruit and canned veget-
`ables, driedand cooked, jellies, jams, compotes, eggs, milk and milk products,
`edible oils and fats, for beauty and skin, body, face, hair or nail care in the form
`of capsules, tablets, vials, yeast, powders, bars, creams or beverages, for med-
`ical and/or cosmetics and/or food purposes; nutritional supplements that may
`contain coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee, flour and
`preparations made from cereals, bread, pastry and confectionary, ices, honey,
`treacle,yeast, baking powder, salt, mustard, vinegar, sauces, condiments,
`spices, ice, for beauty and skin, body, face, hair ornail care, in the form of cap-
`sules, tablets, ampules, yeast, powders, bars, creams or drinks, for medical and/
`or cosmetics and/or food purposes; nutritional additives for medical purposes in
`the nature of natural food extracts derived fromagricultural, horticultural, forestry
`and seed products, fresh fruit and vegetables, seeds, plants and natural
`flowers,for beauty and skin, body, face, hair or nail care in the form of capsules,
`tablets, vials, yeast, powders, bars, creams or beverages, for medical and/or
`cosmetics and/or food purposes; nutritional additives for medical purposes in the
`nature of natural food extracts for beauty and skin, body, face, hair or nail care
`in the form of vials for drinking or beverages, for medical and/or cosmetics and/
`or food purposes
`Class 032. First use: First Use: 0 First Use In Commerce: 0
`Anti-aging beverages, namely, beauty beverages, namely, energy drinks con-
`
`

`
`taining nutritional supplements
`Class 044. First use: First Use: 0 First Use In Commerce: 0
`Medical services; medical clinics; health care services, namely, home health
`care services, managed health care services, and holistic health care services;
`hygienic and beauty care services; aromatherapy services; massage; manicur-
`ing; beauty salons, hairdressing salons; hygienic and beauty care; health care
`consultancy; operating of wellness equipment, namely operating beauty salons
`and medical healing and thermal spas; consultancy inthe field of hygienic and
`beauty care, in particular in the field of decorativecosmetics and anti-ageing; nu-
`trition consultation
`
`Attachments
`
`77697439#TMSN.png( bytes )
`85824482#TMSN.png( bytes )
`LAVADOR.PDF(550108 bytes )
`
`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.
`
`Certificate of Service
`
`Signature
`Name
`Date
`
`/Susan Neuberger Weller/
`Susan Neuberger Weller
`09/17/2015
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Attorney Docket No. 41874-425
`
`In the matter of Application No. 86509041 for LAVADOR
`
`Published in the Official Gazette August 11, 2015
`
`LAVERANA GMBH & CO. KG,
`
`vs.
`
`MARCOS CASTILLO,
`
`Opposer,
`
`Applicant.
`
`Opposition No.
`
`NOTICE OF OPPOSITION
`
`Laverana GmbH & Co. KG ("Opposer"), a German limited partnership with a business address at
`
`Am Weingarten 4, Wennigsen, Germany, D-30974 believes that it will be damaged by registration of U.S.
`
`Application Serial No. 86509041 for the mark LAVADOR in Class 3 for the following goods:
`
`Class 3: soaps and detergents; laundry detergent; laundry soap; bath soap
`
`and hereby opposes the same.
`
`Pursuant to 15 U.S.C. §§ 1052, 1063, and 1141 of the Lanham Act, and 37 C.F.R. §§ 2.101 and
`
`2.104, and predicated upon the following grounds, Opposer alleges the following:
`
`1.
`
`Opposer is an international cosmetics and skincare company which manufactures and
`
`sells natural and organic products worldwide including in the U.S. Its U.S. web site is at
`
`vvww. I avera.com.
`
`2.
`
`Opposer owns a family of LAVERA marks which includes, but is not limited to, U.S.
`
`Registration Nos. 2687717 (incontestable) and 4230293 for the mark LAVERA and U.S. trademark
`
`

`
`Application No. 85824482 for the mark LAVERA which are registered or seek registration for the
`
`following products and services:
`
`Registration 2687717:
`
`IC 003. Cosmetics, namely, face creams and lotions, skin cleansers, personal
`hygiene products, namely, shower gels, shampoos and body lotions, sun screen
`preparations; products for babies' and children's care, namely, bathing oils,
`shampoos, skin oils and creams; men's care products, namely, shaving cream, after-
`shave balms, shower shampoos and deodorants; hair lotions, dentifrices, perfume,
`foot creams and lotions; foot care products, namely, abrasive devices in the nature
`of pumice stones, rasps, or files for treating corns and calluses, non-medicated
`powders and liquids for bathing feet, and non-electric massage devices, specifically,
`devices designed for massaging feet; decorative cosmetics, namely, tinted
`moisturizing creams, makeup, compact face powders and rouges, cover-up sticks,
`lipsticks, eye-decorating pencils and mascara
`
`Registration 4230293:
`
`IC 003: After-shave products, namely, lotions, cologne, balms, creams, emulsions,
`and gels; shaving preparations, namely, foams and gels; after-sun care products,
`namely, creams, gels, lotions, milks, and oils; age-retardant products, namely, gels,
`creams, and lotions; deodorants for personal use; anti-aging products, namely,
`cleansers, creams, moisturizers, and toners; anti-wrinkle creams; aromatherapy
`body care products, namely, body lotions, shower gels, shampoos, conditioners, non-
`medicated lip balms, soaps, body polish, body and foot scrub and non-medicated foot
`creams, oils, and sprays; baby skin and hair care products, namely, lotions, oils,
`powders, shampoos, hair conditioners; bath and shower products, namely, gels,
`salts, mineral salts, creams, lotions, oils, and soaps in liquid, or gel form not for
`medical purposes; beauty products, namely, creams, gels, lotions, masks, milks, and
`serums; body and beauty care cosmetics, namely, body creams, body deodorants,
`body lotions, body mask creams, body mask lotions, body milks, body oils, spray
`used as a personal deodorant and as fragrance, and body washes; cleansing
`products, namely, creams, milk; colognes and perfumes; color cosmetic products,
`namely, blush, blush pencils, chalk for cosmetic use, pencils, eyeliners, eye make-up,
`eye shadows, eyebrow cosmetics, face highlighters, rouges, lip liners, lipsticks,
`concealers for face and body, make-up, creamy face powder, glitter powder, pressed
`face powder, creamy foundation, foundation make-up, loose face powder, mascaras,
`and creamy rouges; cosmetic preparations, namely, preparations against sunburn,
`sun-tan preparations, and sun-protecting preparations; eye skin care products,
`namely, creams, gels, lotions, masks, and make-up removers. facial skin care
`products, namely, creams, milks, lotions, night cream, beauty masks, cleansers,
`creams, emulsions, scrubs, washes; hair care products, namely, conditioners,
`shampoos, hair dressing preparations, lotions, gels, mousse, and sprays; hand skin
`care products, namely, cleaners, creams, soaps, lotions, and scrubs; lip care
`products, namely, balms, creams, and gloss; dental care products, namely,
`dentifrices; essential oils for personal use; exfoliant creams for skin; perfumed and
`scented skin care products, namely, creams, powder, lotions, cream soaps, and
`soaps; skin moisturizing products, namely, creams, milks, and lotions; skin
`
`- 2 -
`
`

`
`clarifiers; skin cleansers; skin fresheners; wrinkle removing skin care preparations;
`wrinkle resistant creams; wrinkle-minimizing cosmetic preparations for topical
`facial use
`
`Application SN 85824482:
`
`IC 003: Non-medicated skin care preparations; beauty preparations, namely,
`cosmetics; non-medicated milks, tonics, lotions, creams, emulsions, and gels for the
`face and body; non-medicated cleansing preparations for the face and body; skin
`astringents for cosmetic purposes; body mist; non-medicated foot soaks, depilatory
`creams; pumice stones for personal use; soaps; bubble bath; shower creams and
`gels; non-medicated skin care preparations, namely, skin exfoliating products;
`make-up removing preparations for the face; talcum powder; shampoos; hair
`lotions, oils, conditioners and repair preparations; hair dyes; hair spray, gel and
`mousse; hair brighteners; hair mascaras; shaving creams and gels; after-shave gels
`and lotions; perfumery; deodorants for personal use; essential oils; bath beads; bath
`oils and salts; cosmetics; skin masks; foundation cream; blush; bronzing powder;
`make up powder; facial shimmer preparations; mascara; eyeliners; cosmetic eye
`and lip pencils; eye shadows; lip balms; lip gloss; lipsticks; makeup removing
`preparations; nail polish; nail forms; false nails; nail polish remover; cuticle
`creams; preparations for strengthening nails; non-medicated concealer sticks; body
`glitter; sun-tanning lotions and creams for the face and body; fake tan lotions and
`creams for the face and body; sunscreen creams; after sun lotions and creams for
`the face and body; Perfumes, eaux de toilette; bath and shower gels and salts not for
`medical purposes; toilet soaps; cosmetics, in particular creams, milks, lotions, gels
`and powders for the face, body and hands; cosmetics, namely, sun-tanning milks,
`gels and oils and after-sun preparations; make-up preparations; shampoos. gels,
`mousses, balms and preparations in aerosol form for hairdressing and hair care;
`hair lacquers; hair-coloring and hair-decolorizing preparations; preparations for
`waving and setting hair; cosmetics, decorative cosmetics; face creams and lotions;
`skin-cleansing lotions and creams, hand and body lotions and creams; tinted
`moisturizing creams, make-up, foundation, face powder and rouge; blemish stick,
`lip pencils, eyeliner pens and mascara, eye shadow; sun care preparations; foot-care
`preparations; foot creams and lotions; exfoliants for skin; abrasive implements in
`the form of pumice stones; non-medicated powders and lotions for foot spas; non-
`medicated body care products, namely, creams, lotions and polish; shower gels; hair
`care products, namely, shampoos, hair lotions, conditioning rinses, conditioners,
`combined shampoo and conditioner, hair sprays, styling mousse and gels; hair dyes;
`baby and infant care products, namely, baby creams, baby shampoos, and baby
`toothpaste; bath oils; skin oils and creams; anti-wrinkle creams; massage oils;
`grooming products for men, namely, shaving cream, after-shave balms; products
`for oral hygiene, not for medical purposes, namely, toothpaste; preparations for the
`mouth and for cleaning the mouth, breath-freshening and mouth-freshening
`preparations, namely, mouth sprays, mouth rinses, dentifrices, and toothpaste;
`antiperspirants
`
`IC 005: Pharmaceutical products, namely, for the treatment of neurodermitis, acne,
`skin irritations, skin care problems; health-care products, namely, vitamins and
`dietary supplements; medicated lubricants; dietetic foods, namely, crackers, sweets,
`yogurts adapted for medical use; sanitary preparations for medical use; vitamin
`
`- 3 -
`
`

`
`preparations; disinfectants for hygiene purposes; royal jelly for medical purposes;
`herbal teas for medicinal purposes; natural remedy preparations, namely, corn
`remedies for the treatment of hormonal and chemical imbalances, sleep disorders,
`skin care problems; headache pencils; lactose for medical purposes; milking grease
`for medical purposes; dietetic substances and beverages for babies, infants and
`children, namely, baby food and electrolyte beverages for medical purposes;
`nutritional supplements that may contain proteins, glucides, lipids, peptides and/or
`fibres, or micronutrients such as vitamins and/or minerals and/or amino acids
`and/or fatty acids and/or plants, and/or vegetable extracts and/or purified molecules
`extracted from vegetables, for beauty and skin, body, face, hair or nail care, in the
`form of capsules, tablets, ampules, yeast, powders, bars, creams or drinks, for
`medical and/or cosmetics and/or food purposes; nutritional additives for medical
`purposes in the nature of natural food extracts derived from meat, fish, poultry and
`game, meat extracts, fruit and canned vegetables, dried and cooked, jellies, jams,
`compotes, eggs, milk and milk products, edible oils and fats, for beauty and skin,
`body, face, hair or nail care in the form of capsules, tablets, vials, yeast, powders,
`bars, creams or beverages, for medical and/or cosmetics and/or food purposes.
`nutritional supplements that may contain coffee, tea, cocoa, sugar, rice, tapioca,
`sago, artificial coffee, flour and preparations made from cereals, bread, pastry and
`confectionary, ices, honey, treacle, yeast, baking powder, salt, mustard, vinegar,
`sauces, condiments, spices, ice, for beauty and skin, body, face, hair or nail care, in
`the form of capsules, tablets, ampules, yeast, powders, bars, creams or drinks, for
`medical and/or cosmetics and/or food purposes; nutritional additives for medical
`purposes in the nature of natural food extracts derived from agricultural,
`horticultural, forestry and seed products, fresh fruit and vegetables, seeds, plants
`and natural flowers, for beauty and skin, body, face, hair or nail care in the form of
`capsules, tablets, vials, yeast, powders, bars, creams or beverages, for medical
`and/or cosmetics and/or food purposes; nutritional additives for medical purposes
`in the nature of natural food extracts for beauty and skin, body, face, hair or nail
`care in the form of vials for drinking or beverages, for medical and/or cosmetics
`and/or food purposes
`
`IC 032: Anti-aging beverages, namely, beauty beverages, namely, energy drinks
`containing nutritional supplements
`
`IC 044: Medical services; medical clinics; health care services, namely, home health
`care services, managed health care services, and holistic health care services;
`hygienic and beauty care services; aromatherapy services; massage; manicuring;
`beauty salons, hairdressing salons; hygienic and beauty care; health care
`consultancy; operating of wellness equipment, namely operating beauty salons and
`medical healing and thermal spas; consultancy in the field of hygienic and beauty
`care, in particular in the field of decorative cosmetics and anti-ageing; nutrition
`consultation
`
`Copies of the three US Certificates of Registration, Sections 8 & 15 and Sections 8 & 9 acceptance
`
`documents, and the USPTO TESS printout for the pending Application are attached hereto and
`
`incorporated herein by reference as Exhibit A. ("Opposer's Family of LAVERA Marks").
`
`- 4 -
`
`

`
`3. Upon information and belief, Marcos Castillo ("Applicant") is an individual with an address at
`
`436 Brook Avenue, Bronx, NY 10454 and seeks to register the mark LAVADOR for:
`
`Class 3 soaps and detergents, laundry detergent; laundry soap; bath soap
`
`pursuant to U.S. Application Serial No. 86509041 filed on January 21, 2015 under Section 1(b) of the
`
`U.S. Trademark Act ("Applicant's Mark" or "Applicant's Application").
`
`4.
`
`Applicant's Mark LAVADOR is likely to cause confusion with Opposer's Family of
`
`LAVERA Marks when used for the goods in Class 3 as set forth in Applicant's Application, is likely to
`
`deceive purchasers and potential purchasers of Applicant's goods and Opposer's goods and/or services
`
`into erroneously believing that there is some relationship between Opposer and Applicant, or that
`
`Opposer has authorized, sponsored, or licensed Applicant's use of the mark LAVADOR in violation of 15
`
`U.S.C. § 1052(d).
`
`5.
`
`Opposer has used its Family of LAVERA Marks for over twenty five years throughout
`
`the world and in the U.S. since, at least, 1999. Opposer has established a well-known reputation under its
`
`Family of LAVERA Marks in the same market in which and to the same customers to which Applicant
`
`does or will market and sell his Class 3 goods. Thus, it is highly likely that confusion will occur between
`
`the two marks at issue.
`
`6.
`
`Registration of Applicant's Mark will damage Opposer since such registration will give
`
`color of exclusive statutory rights to Applicant in the mark LAVADOR in derogation and violation of the
`
`prior and superior federal rights of Opposer.
`
`WHEREFORE, Opposer Laverana GmbH & Co. KG believes that it will be damaged by the
`
`registration of U.S. Application Serial No. 86609041 for the mark LAVADOR in Class 3 and, therefore,
`
`respectfully requests that the Trademark Trial and Appeal Board refuse registration of Applicant's Mark
`
`under 15 U.S.C. §1052(d).
`
`- 5 -
`
`

`
`Respectfully submitted,
`
`LAVERANA GMBH & CO. KG
`
`usan Neuberger Weller
`intz, Levin, Cohn, Ferris,
`Glovsky and Popeo, P.C.
`701 Pennsylvania Avenue, N.W.
`Suite 900
`Washington, D.C. 20004
`Telephone: (202) 585-3510
`Facsimile: (202) 434-7400
`E-mail: snweller@mintz.com
`
`Attorney for Opposer
`LAVERANA GmbH & Co. KG
`
`Dated: September/7 , 2015
`
`- 6 -
`
`

`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a copy of the foregoing NOTICE OF OPPOSITION was served by U.S. first
`
`class mail, postage prepaid, on this
`
`day of September, 2015 on the following:
`
`Marcos Castillo
`4346 Brook Avenue
`Bronx, NY 10454
`Applicant
`
`Shauna Maloney
`Raj Abhyanker P C
`451 N Shoreline Blvd
`Mountain View, CALIFORNIA 94043
`Attorneys of Record for Applicant
`
`/Shelly Gause/
`Shelly Gause
`
`43376837v.1
`
`- 7 -
`
`

`
`EXHIBIT A
`EXHIBIT A
`
`

`
`Int. Cls.: 3 and 5
`Prior U.S. Cls.: 1,
`United States
`
`4, 6, 18, 44, 46, 50, 51 and 52
`Reg. No. 2,687,717
`Patent and Trademark Office Registered Feb. 18, 2003
`
`TRADEMARK
`PRINCIPAL REGISTER
`
`LAVERA
`
`LAVERA NATURKOSMETIK GMBH (FED REP
`GERMANY CORPORATION)
`AM WEINGARTEN 4
`30974 WENNTGSEN, FED REP GERMANY
`
`FOR; COSMETICS, NAMELY, FACE CREAMS
`AND LOTIONS, SKIN CLEANSERS, PERSONAL
`HYGIENE PRODUCIN, NAMELY, SHOWER GELS,
`SHAMPOOS AND BODY LOTIONS, SUN SCREEN
`PREPARATIONS; PRODUCTS FOR BABIES' AND
`CHILDRENS' CARE, NAMELY, BATHING OILS,
`SHAMPOOS, SKIN OILS AND CREAMS; MEN'S
`CARE PRODUCTS, NAMELY, SHAVING CREAM,
`AFTER-SHAVE BALMS, SHOWER. SHAMPOOS
`AND DEODORANTS; HAIR LOTIONS, DENTIFRI-
`CES, PERFUME, FOOT CREAMS AND LOTIONS;
`FOOT CARE PRODUCTS, NAMELY, ABRASIVE
`DEVICES IN THE NATURE OF PUMICE STONES,
`RASPS, OR FILES FOR TREATING CORNS AND
`CALLUSES, NON-MEDICATED POWDERS AND
`LIQUIDS FOR BATHING FEET, AND NON-ELEC-
`
`RIC MASSAGE DEVICES, SPECIFICALLY, DEVI-
`CES DESIGNED FOR MASSAGING FEET;
`DECORATIVE COSMETICS, NAMELY, TINTED
`MOISTURIZING CREAMS, MAKEUP, COMPACT
`FACE POWDERS AND ROUGES, COVER-UP
`STICKS, LIPSTICKS, EYE-DECORATING PENCILS
`AND MASCARA, IN CLASS 3 (U.S. CLS. 1, 4, 6, 50, 51
`AND 52).
`
`FOR NUTRITIONAL SUPPLEMENTS AND VI-
`TAMINS, IN CLASS 5 (U.S. CLS. 6, 18, 44, 46, 51 AND
`52).
`
`OWNER OF FED REP GERMANY REG. NO.
`1087216, DATED 2-22-1999, EXPIRES 12-31-2005.
`
`SER. NO. 75-646,981, FILED 2-22-1999.
`
`M. E. BODSON, EXAMINING ATTORNEY
`
`

`
`Side - 1
`
`NOTICE OF ACCEPTANCE OF §8
`DECLARATION AND §9 RENEWAL
`MAILING DATE: Jan 24, 2013
`
`The declaration and renewal application filed in connection with the registration identified below meets the
`requirements of Sections 8 and 9 of the Trademark Act, 15 U.S.C. §§1058 and 1059. The declaration is
`accepted and renewal is granted. The registration remains in force.
`
`For further information about this notice, visit our website at: http://www.uspto.qov, To review information
`regarding the referenced registration, go to http://tarrusbto.qov.
`
`REG NUMBER:
`MARK:
`lOWNER:
`
`2687717
`LAVERA
`LAVERANA GMBH & CO. KG
`
`Side - 2
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`COMMISSIONER FOR TRADEMARKS
`P.O. BOX 1451
`ALEXANDRIA, VA 22313-1451
`
`FIRST-CLASS
`MAIL
`U.S POSTAGE
`PAID
`
`Nina Shreve
`FITZPATRICK, CELLA, HARPER & SCINTO
`1290 AVENUE OF THE AMERICAS
`NEW YORK, NY 10104-3800
`
`

`
`Lavera Intense Volumizing Mascara - Black I Lavera Natural Cosmetics & Organic Skinc... Page 2 of 3
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`1/2/2013
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`

`
`
`
`

`
`Combined Declaration of Use and Incontestability under Sections
`8 & 15
`
`The table below presents the data as entered.
`
`REGISTRATION
`NUMBER
`
`2687717
`
`REGISTRATION
`DATE
`
`02/18/2003
`
`SERIAL
`NUMBER
`
`75646981
`
`MARK SECTION
`
`MARK
`
`LAVERA
`
`OWNER SECTION (current)
`
`NAME
`
`STREET
`
`CITY
`
`Lavera Naturkosmetik GmbH
`
`Am Weingarten 4
`
`30974 Wennigsen
`
`COUNTRY
`
`DE
`
`OWNER SECTION (proposed)
`
`NAME
`
`STREET
`
`CITY
`
`laverana GmbH
`
`Am Weingarten 4
`
`30974 Wennigsen
`
`COUNTRY
`
`DE
`
`ATTORNEY SECTION (current)
`
`NAME
`
`Nina Shreve
`
`FIRM NAME
`
`FITZPATRICK, CELLA, HARPER & SCINTO
`
`STREET
`
`CITY
`
`STATE
`
`30 ROCKEFELLER PLAZA
`
`NEW YORK NEW
`
`YORK
`
`

`
`POSTAL CODE
`
`10112
`
`COUNTRY
`
`United States
`
`ATTORNEY
`DOCKET NUMBE
`
`
`
`1849 7,
`
`ATTORNEY SECTION (proposed)
`
`NAME
`
`Nina Shreve
`
`FIRM NAME
`
`FrEZPATRICK, CELLA, HARPER & SCINTO
`
`STREET
`
`1 CITY
`
`STATE
`
`30 ROCKEFELLER PLAZA
`
`NEW YORK
`
`New York
`
`POSTAL CODE
`
`10112
`
`COUNTRY
`
`• United States
`
`ATTORNEY
`DOCKET NUMBER
`
`1849.7
`
`GOODS AND/OR SERVICES SECTION
`
`INTERNATIONAL 003
`CLASS
`
`GOODS OR
`SERVICES TO BE
`DELETED
`
`GOODS OR
`1 SERVICES .IN USE
`IN COMMERCE
`
`PERFUME; FOOT CREAMS AND LOTIONS; FOOT CARE
`• PRODUCTS, NAMELY, ABRASIVE DEVICES IN THE NATURE OF
`PUMICE STONES, RASPS, OR FILES FOR TREATING CORNS AND
`• CALLUSES, NON-MEDICATED POWDERS AND LIQUIDS FOR
`BATHING FEET, AND NON-ELECRIC MASSAGE DEVICES,
`SPECIFICALLY, DEVICES DESIGNED FOR MASSAGING FEET
`
`COSMETICS, NAMELY, FACE CREAMS AND LOTIONS, SKIN
`CLEANSERS, PERSONAL HYGIENE PRODUCTS, NAMELY,
`SHOWER GELS, SHAMPOOS AND BODY LOTIONS, SUN SCREEN
`PREPARATIONS; PRODUCTS FOR BABIES AND CHILDRENS'
`CARE, NAMELY, BATHING OILS, SHAMPOOS, SKIN OILS AND
`CREAMS; MEN'S CARE PRODUCTS, NAMELY, SHAVING CREAM,
`AFTER-SHAVE BALMS, SHOWER SHAMPOOS AND
`DEODORANTS; HAIR LOTIONS, DENTIFRICES, DECORATIVE
`COSMETICS, NAMELY, TINTED MOISTURIZING CREAMS,
`MAKEUP, COMPACT FACE POWDERS AND ROUGES, COVER-UP
`STICKS, LIPSTICKS, EYE-DECORATING PENCILS AND