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`INTELLECTUAL PROPERTY LAW
`
`I
`
`"“~~~A~—-'
`
`January 8, 2016
`
`DonaI:Ittl(_;"|1I)e¢:naTls—:‘:v1
`Partner
`Iadascom
`
`ddennison
`
`1727 King Street, Suite 105
`Alexandria, VA 22314
`T 703_837_9600 X15
`F 703.837.0980
`
`VIA HAND DELIVERY
`
`COMMISSIONER FOR TRADEMARKS
`
`P.O. Box 1451
`
`Alexandria, VA 22313-1451
`
`Re:
`
`BERARD GROUPE vs. WEIQING DONG
`
`Application Serial No. 86—674081
`Mark: HAIRMODE
`
`Attorney Reference: C16676038
`
`Dear Commissioner:
`
`On behalf of BERARD GROUPE, please acknowledge receipt of the following:
`
`1 .
`
`2.
`
`3.
`
`Notice of Opposition
`
`Authorization to charge the LADAS & PARRY LLP Deposit account #120423 the
`amount of $300.00 for the government filing fee
`
`Copy of cover letter to be date stamped by the U.S. Patent and Trademark Office
`and returned as a receipt of filing
`
`If there are any questions, please contact the undersigned.
`
`Respectfully submitted,
`
`1//....4//xZ..,~...
`
`By:
`
`Donald L. Dennison
`
`Attorney for Opposer
`
`DLD/py
`Enclosures: As stated
`
`WASHINGTON D.C. AREA - NEW YORK - CHICAGO - LOS ANGELES - LONDON - MUNICH
`
`

`
`TTAB
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition No.
`
`__
`
`Application No. 86-674081
`
`: ]
`
`' _
`
`] 1
`
`1
`
`Opposer,
`
`Applicant.
`
`BERARD GROUPE,
`
`V.
`
`WEIQING DONG,
`
`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 HAIRMODE for body waxing services for the human
`
`body; cosmetic body care services; day spa services, namely,
`
`nail care, manicures, pedicures and nail enhancements; hair
`
`salon services, namely hair cutting, styling, coloring and
`
`hair extension services; hair dressing salons; and nail care
`
`services in Class 44, Serial No. 86/674,081, filed June 25,
`
`2015
`
`by Weiging Dong and published for Opposition on
`
`1
`
`IIIIWIIIIIW|||||ll|||Hl\1HllilH|H||l|H!||||H||||l
`*O1-O8-2016*
`U.S. Patient and Trademark Offioe #72
`
`

`
`November 10, 2015 in the U.S. Patent and Trademark Office
`
`Official Gazette; Berard Groupe,
`
`a French Company, having its
`
`principal place of business at 46 rue d’Amsterdam, Paris,
`
`France 75009, believes that it would be damaged by such
`
`registration and hereby opposes registration of said alleged
`
`trademark as it applies to the specified services in Class 44.
`
`Opposer has obtained an extension of time through January
`
`9, 2016 in which to file this Notice of Opposition.
`
`As grounds for the opposition, it is alleged that:
`
`1. Applicant, Weiqing Dong,
`
`is on information and belief, an
`
`individual and citizen of the United States with an address
`
`and place of business located at 144-44 41“ Avenue, #2D,
`
`Flushing, New York 11255, and seeks to register the trademark
`
`HAIRMODE for body waxing services for the human body; cosmetic
`
`body care services; day spa services, namely, nail care,
`
`manicures, pedicures and nail enhancements; hair salon
`
`

`
`services, namely hair cutting, styling, coloring and hair
`
`extension services; hair dressing salons; and nail care
`
`services in Class 44, as set forth in the application here,
`
`opposed.
`
`The application was filed on June 25,2015, based
`
`upon alleged use in commerce since May 27, 2015.
`
`2. Opposer is well known both in France,
`
`the United States
`
`and throughout
`
`the world as a provider of a variety of beauty
`
`salon services including cosmetology, manicure and pedicure
`
`services and was founded at least as early as 1968 and
`
`operates in over 14 countries with additional salons under
`
`consideration.
`
`3. Opposer has used its well—recognized service mark “MOD’S
`
`HAIR" in conjunction with its services throughout
`
`the world.
`
`4.
`
`In conjunction with its salons, Opposer publishes
`
`magazines, brochures and pamphlets all bearing its trademark
`
`“MOD’ s HAIR" .
`
`

`
`5. Opposer’s mark MOD’S HAIR® is the subject of United
`
`States Trademark Registration No. 3,621,027, registered on
`
`May 12, 2009, well prior to the first use date alleged by the
`
`Applicant. This registration is in full force and effect. A
`
`copy of this registration is attached hereto as Exhibit “A”.
`
`6. Opposer’s registration identified in Paragraph 5 supra,
`
`covers hairdressing salons; beauty salon services; providing
`
`health care services for human beings; providing hygienic and
`
`beauty services for human beings, namely, cosmetology,
`
`manicure and pedicure services in Class 44.
`
`7. Opposer affixes its mark prominently by printing the same
`
`on signage associated with its salons and on a wide Variety of
`
`advertising materials and on its web—site.
`
`8. Opposer’s salons are in actual operation in commerce in
`
`the United States and elsewhere as noted above, and enjoy a
`
`high degree of consumer acceptance and recognition.
`
`

`
`9. Applicant's mark is so similar to Opposer’s registered and
`
`mark as to be likely to cause confusion, mistake or deception
`
`as to the source of the services of the Applicant,
`
`especially
`
`since the Applicant's mark is intended to
`
`be used in
`
`conjunction with services identical to or
`
`associated with the
`
`services of the Opposer.
`
`lO.
`
`The marks here in issue are visually
`
`and phonetically
`
`similar, and present the same connotation
`
`to the consumer of
`
`the designated services.
`
`The mark of the
`
`Applicant on its
`
`services so resembles Opposer’s registered mark so as to be
`
`likely to indicate to the consumer that such services have met
`
`the rigid quality and standards developed by the Opposer and
`
`that the services have been endorsed and approved by the
`
`Opposer and will cause confusion,
`
`or to cause mistake or to
`
`deceive. 15 U.S.C. §lO52(d)
`
`18.
`
`If the Applicant is permitted to use
`
`and register the
`
`mark herein opposed for the services specified in its
`
`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
`
`engage Applicant's services in the mistaken belief that such
`
`services originate with or are sponsored and approved by the
`
`Opposer. Any such confusion will inevitably result in loss of
`
`reputation and possible legal liability to Opposer. Moreover,
`
`any objection or fault found with Applicant's services
`
`rendered under the HAIRMODE mark, herein opposed, would
`
`necessarily reflect upon and seriously injure the reputation
`
`which Opposer has established for its services and will
`
`thereby erode the valuable goodwill established by Opposer in
`
`its mark.
`
`ll.
`
`In View of Opposer’s Registration noted herein, priority
`
`is not an issue in this opposition.
`
`12. Opposer’s registration for its MOD’S HAIR® mark is valid
`
`and in full force and effect.
`
`

`
`13. Opposer’s use of its mark here identified has been
`
`continuous, exclusive and commercially significant for many
`
`years in connection with its goods and services.
`
`14. Opposer’s mark here identified is widely recognized by the
`
`consumers of beauty salon services and the like in the United
`
`States and abroad as a designation of the source of the
`
`services provided by Opposer.
`
`15. 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
`
`86/674,081 be rejected, and that registration of the mark
`
`shown therein for the services set forth therein be refused
`
`and denied.
`
`The Opposition fee of $300.00 required by the Trademark
`
`Rules of Practice, 2.
`
`6(a)(l7)
`
`is enclosed in the form of a
`
`Deposit Account charge authorization.
`
`

`
`January 8, 2016
`
`Respectfully submitted,
`
`Lgié/,£..fl.,.i.
`
`Donald L. Dennison
`LADAS & PARRY LLP
`
`Attorneys for Opposer
`1727 King Street, Suite 105
`Alexandria, VA 22314
`(703)837-9600 Ext. 15
`Fax (703)837-0980
`ddennison@ladas.com
`
`CERTIFICATE OF SERVICE
`
`This is to certify that a copy of the above Notice of
`
`Opposition was served upon Applicant's listed attorney, Ting
`
`Geng, c/o The Law Offices of Geng and Zhang PLLC,
`
`3907 Prince Street, Suite 3E, Flushing, New York 11354-5321,
`
`by first class mail with proper postage affixed this eighth
`
`day of January, 2016.
`
`1¢g...£-/2‘~’AZ...‘_
`
`Donald L.
`
`Dennison
`
`

`
`Int. Cl.: 44
`
`Prior U.S. C1s.: 100 and 101
`
`United States Patent and Trademark Office
`
`Reg. No. 3,621,027
`Registered May 12, 2009
`
`SERVICE MARK
`PRINCIPAL REGISTER
`
`MOD'S HAIR
`
`BERARD GROUPE (FRANCE COMPANY)
`46 RUE D’AMSTERDAM
`PARIS, FRANCE 75009
`
`FOR: HAIRDRESSING SALONS; BARBERSHOPS
`AND BEAUTY SALON SERVICES; PROVIDING
`HEALTH CARE SERVICES FOR HUMAN BEINGS;
`PROVIDING HYGIENIC AND BEAUTY SERVICES
`FOR HUMAN BEINGS, NAMELY, COSMETOLOGY;
`MANICURE AND PEDICURE SERVICES; MAS-
`SAGE SERVICES; PROVIDING MEDICAL ASSIS-
`TANCE; HAIR TRANSPLANTATION SERVICES
`AND PLASTIC SURGERY, IN CLASS 44 (US. CLS.
`100 AND 101).
`
`FIRST USE 0-0-1968; IN COMMERCE 9-1-2008.
`
`THE MARK CONSISTS OF STANDARD CHAR-
`ACTERS WITHOUT CLAIM TO ANY PARTICULAR
`FONT, STYLE, SIZE, OR COLOR.
`
`NO CLAIM IS MADE TO THE EXCLUSIVE
`RIGHT TO USE "HAIR", APART FROM THE MARK
`AS SHOWN.
`
`SN 78-857,500, FILED 4-10-2006.
`
`STEVEN PEREZ, EXAMINING ATTORNEY
`
`EXHIBIT “A”

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