Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA822792
`05/24/2017
`
`ESTTA Tracking number:
`
`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
`
`MANA PRODUCTS, INC.
`
`Granted to Date
`of previous ex-
`tension
`
`Address
`
`Attorney informa-
`tion
`
`05/24/2017
`
`32-02 Queens Boulevard
`Long Island City, NY 11101
`UNITED STATES
`
`Catherine Dugan O'Connor
`Day Pitney LLP
`One International Place
`Boston, MA 02110
`UNITED STATES
`trademarks@daypitney.com, TMrecords@daypitney.com, cdocon-
`nor@daypitney.com, mraubeson@daypitney.com, lleone@daypitney.com
`Phone:203.977.7538
`
`Applicant Information
`
`Application No
`
`87163496
`
`Publication date
`
`01/24/2017
`
`Opposition Filing
`Date
`
`Applicant
`
`05/24/2017
`
`Padilla, Ramon
`Suite 1208
`New York, NY 10011
`UNITED STATES
`
`Opposition Peri-
`od Ends
`
`05/24/2017
`
`Goods/Services Affected by Opposition
`
`Class 044. First Use: 2015/04/01 First Use In Commerce: 2015/06/01
`All goods and services in the class are opposed, namely: Permanent makeup services
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`Mark Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`
`4347535
`
`Registration Date
`
`06/04/2013
`
`Word Mark
`
`EVEN TRUE
`
`Application Date
`
`12/16/2011
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 003. First use: First Use: 2013/02/01 First Use In Commerce: 2013/02/01
`Non-medicated skin care preparations; cosmetics
`
`Attachments
`
`85497674#TMSN.png( bytes )
`EVERTRUE opposition.pdf(16292 bytes )
`EVERTRUE Opposition Exhibit A.pdf(24289 bytes )
`Evertrue Opposition Exhibit B.pdf(163399 bytes )
`
`Signature
`
`/Catherine Dugan O'Connor/
`
`Name
`
`Date
`
`Catherine Dugan O'Connor
`
`05/24/2017
`
`

`

`IN THE UNITED STATES PATENT & TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`____________________________________
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`Applicant.
`____________________________________)
`
`Opposition No.:
`
`Mark: EVERTRUE
`
`Serial No.: 87/163,496
`Class: 44
`
`MANA PRODUCTS, INC.,
`
`Opposer,
`
`v.
`
`
`
`RAMON PADILLA,
`d/b/a EVERTRUE SALON,
`
`NOTICE OF OPPOSITION
`
`Mana Products, Inc., a New York corporation, with an address of 32-02 Queens
`
`Boulevard, Long Island City, NY 11101 (hereafter “Opposer” or “Mana”) believes that it will be
`
`damaged by registration of the mark that is the subject of U.S. Application Serial No. 87/163,496
`
`for the mark EVERTRUE, and hereby opposes registration of same. The grounds are as follows:
`
`1. U.S. Application Serial No. 87/163,496 (the “’496 Application”) was filed on September
`
`7, 2016 by Ramon Padilla, an individual, d/b/a EverTrue Salon, with an address of Suite 1208 37
`
`West 20th Street New York, NY 10011(hereafter “Applicant” or “Padilla”).
`
`2. The ‘496 Application seeks registration of the mark EVERTRUE in connection with
`
`permanent makeup services in Class 44.
`
`3. Since 1975, Opposer has been a leading U.S. based contract and private label cosmetics
`
`manufacturer. Opposer offers a wide variety of cosmetic, skincare, hair care and related products
`
`and services and has worked to develop formulas for the world’s most renowned beauty brands.
`
`Currently, Opposer employs over 800 people and operates three product innovation labs and two
`
`manufacturing facilities for production, packaging and assembly and distribution.
`
`97249303.2
`
`

`

`4. Opposer began offering non-medicated skin care preparations and cosmetics under the
`
`EVEN TRUE trademark in connection with its Black Opal division on or about February 1,
`
`2013.
`
`5. Opposer has expended significant time, money and effort in promoting and marketing the
`
`EVEN TRUE-branded goods through substantial business activities in the United States.
`
`6. Through its use and development of the EVEN TRUE brand, Opposer has established a
`
`strong customer base and is known as a provider of high quality cosmetics and personal beauty
`
`goods in connection with the EVEN TRUE trademark.
`
`7. The recognition and goodwill associated with Opposer’s EVEN TRUE trademark is the
`
`result of Opposer’s marketing efforts and the high quality of Opposer’s EVEN TRUE-branded
`
`goods.
`
`8.
`
` Opposer owns U.S. Reg. No. 4,347,535 (the “’535 Registration”) for the mark EVEN
`
`TRUE covering “non-medicated skin care preparations; cosmetics” in Class 3. The registration
`
`issued on June 4, 2013, from an application that was filed on December 16, 2011. (TSDR
`
`Records attached hereto as Exhibit A).
`
`9.
`
`In accordance with Sections 7(b), 22 and 33(a) of the Lanham Act, Opposer’s EVEN
`
`TRUE Registration constitutes prima facie evidence of the validity of the registered mark and of
`
`the registration thereof, Opposer’s ownership of the mark shown in said registration, and
`
`Opposer’s exclusive right to use the mark in commerce in connection with the goods named
`
`therein, without condition or limitation.
`
`10. Upon information and belief, on September 7, 2016, Applicant filed Application Serial
`
`No. 87/163,496 to register the mark EVERTRUE for “permanent makeup services” in Class 44
`
`with an alleged June 1, 2015 date of first use in commerce in the United States.
`
`97249303.2
`
`.
`
`-2-
`
`

`

`11. Applicant’s EVERTRUE mark is highly similar in appearance, sound, and commercial
`
`impression to Opposer’s EVEN TRUE Registration.
`
`12. The services of Applicant offered under its EVERTRUE mark are either identical or
`
`related to the Opposer’s goods offered under its EVEN TRUE Registration in that they both
`
`pertain to makeup and beauty.
`
`13. The services of Applicant offered under its EVERTRUE mark and the goods of Opposer
`
`offered under its EVEN TRUE mark are directed to the same consumers and often emanate from
`
`a single source.
`
`14. For example, Applicant offers after-care skin products for sale on its website,
`
`www.evertruesalon.com (the “Website”). Such products are encompassed by Opposer’s ’535
`
`Registration, which includes “non-medicated skin care preparations.” (Screen shots of Website
`
`attached hereto as Exhibit B).
`
`15. Opposer’s filing date, registration date, and claimed dates of first use for the goods
`
`offered under the ’535 Registration are all long prior to any use or application date for
`
`EVERTRUE by Applicant, giving Opposer clear priority.
`
`16. Opposer’s ’535 Registration has a priority date of December 16, 2011, which predates
`
`both Applicant’s filing date of September 7, 2016 and claimed first use in commerce date of June
`
`1, 2015 by more than three and a half years.
`
`17. Applicant’s EVERTRUE mark as shown in App. Serial No. 87/163,496 is confusingly
`
`similar to Opposer’s senior EVEN TRUE mark in terms of appearance, sound, and overall
`
`commercial impression.
`
`18. Applicant’s trademark as shown in App. Serial No. 87/163,496 consists of or
`
`97249303.2
`
`.
`
`-3-
`
`

`

`comprises a mark which so resembles Opposer’s previously used and registered EVEN TRUE
`
`trademark as to be likely, when used for the services listed in the subject application and goods
`
`offered for sale on the Website, to cause confusion, to cause mistake or to deceive consumers
`
`into the belief that the services and associated goods offered under EVERTRUE come from,
`
`include, or are otherwise authorized, endorsed or sponsored by Mana in violation of Section 2(d)
`
`of the Lanham Act, 15 USC § 1052(d).
`
`19. Based on the foregoing, registration of the mark shown in App. Serial No. 87/163,496 is
`
`likely to cause injury and damage to Opposer.
`
`WHEREFORE, Opposer asserts that it will be damaged by the registration of
`
`Applicant’s mark EVERTRUE and requests that this opposition be sustained and that U.S.
`
`Application Serial No. 87/163,496 filed on September 7, 2016 by Ramon Padilla d/b/a EverTrue
`
`Salon be rejected and its registration refused.
`
`Respectfully submitted,
`
`MANA PRODUCTS, INC.
`
`__________________________
`Catherine Dugan O’Connor
`Melanie J. Raubeson
`Day Pitney LLP
`One International Place
`Boston, MA 02110
`Tel: 203-977-7538
`E-mail: trademarks@daypitney.com
`cdoconnor@daypitney.com
`mraubeson@daypitney.com
`
`Dated: May 23, 2017
`
`97249303.2
`
`.
`
`-4-
`
`

`

`EXHIBIT A
`EXHIBIT A
`
`

`

`Generated on: This page was generated by TSDR on 2017-05-19 14:09:34 EDT
`
`Mark: EVEN TRUE
`
`US Serial Number: 85497674
`
`US Registration
`Number:
`
`4347535
`
`Register: Principal
`
`Mark Type: Trademark
`
`Application Filing
`Date:
`
`Dec. 16, 2011
`
`Registration Date: Jun. 04, 2013
`
`Status: Registered. The registration date is used to determine when post-registration maintenance documents are due.
`
`Status Date: Jun. 04, 2013
`
`Publication Date: Mar. 06, 2012
`
` 
`
`Mark Literal
`Elements:
`
`EVEN TRUE
`
`Notice of
`Allowance Date:
`
`May 01, 2012
`
`Mark Information
`
`Standard Character
`Claim:
`
`Mark Drawing
`Type:
`
`Yes. The mark consists of standard characters without claim to any particular font style, size, or color.
`
`4 - STANDARD CHARACTER MARK
`
`Note: The following symbols indicate that the registrant/owner has amended the goods/services:
`
`Goods and Services
`
`Brackets [..] indicate deleted goods/services;
`Double parenthesis ((..)) identify any goods/services not claimed in a Section 15 affidavit of incontestability; and
`Asterisks *..* identify additional (new) wording in the goods/services.
`
`For: Non-medicated skin care preparations; cosmetics
`
`International
`Class(es):
`
`003 - Primary Class
`
`Class Status: ACTIVE
`
`Basis: 1(a)
`
`U.S Class(es): 001, 004, 006, 050, 051, 052
`
`First Use: Feb. 01, 2013
`
`Use in Commerce: Feb. 01, 2013
`
`Basis Information (Case Level)
`
`Filed Use: No
`
`Filed ITU: Yes
`
`Filed 44D: No
`
`Filed 44E: No
`
`Filed 66A: No
`
`Currently Use: Yes
`
`Currently ITU: No
`
`Currently 44D: No
`
`Currently 44E: No
`
`Currently 66A: No
`
`Amended Use: No
`
`Amended ITU: No
`
`Amended 44D: No
`
`Amended 44E: No
`
`Filed No Basis: No
`
`Currently No Basis: No
`
`Current Owner(s) Information
`
`Owner Name: MANA PRODUCTS, INC.
`
`Owner Address: 32-02 Queens Boulevard
`Long Island City, NEW YORK 11101
`UNITED STATES
`
`Legal Entity Type: CORPORATION
`
`State or Country
`Where Organized:
`
`NEW YORK
`
`

`

`Attorney/Correspondence Information
`
`Attorney Name: Michael A. Bucci
`
`Attorney Primary
`Email Address:
`
`nytrademark@daypitney.com
`
`Correspondent
`Name/Address:
`
`MICHAEL A. BUCCI
`DAY PITNEY LLP
`7 TIMES SQ
`NEW YORK, NEW YORK 10036-7311
`UNITED STATES
`
`Attorney of Record
`
`Docket Number: 407441
`
`Attorney Email
`Authorized:
`
`No
`
`Correspondent
`
`Phone:
`
`(860) 275-0523
`
`Fax:
`
`(212) 916-2940
`
`Correspondent e-
`mail:
`
`nytrademark@daypitney.com mabucci@daypitney
`.com coconnor@daypitney.com edugan@daypitn
`ey.com tmrecords@daypitney.com
`
`Correspondent e-
`mail Authorized:
`
`Yes
`
`Domestic Representative - Not Found
`
`Prosecution History
`
`Date
`
`Description
`
`Jun. 04, 2013
`
`REGISTERED-PRINCIPAL REGISTER
`
`May 03, 2013
`
`NOTICE OF ACCEPTANCE OF STATEMENT OF USE E-MAILED
`
`May 02, 2013
`
`LAW OFFICE REGISTRATION REVIEW COMPLETED
`
`Apr. 26, 2013
`
`ALLOWED PRINCIPAL REGISTER - SOU ACCEPTED
`
`Apr. 17, 2013
`
`STATEMENT OF USE PROCESSING COMPLETE
`
`Mar. 22, 2013
`
`USE AMENDMENT FILED
`
`Apr. 16, 2013
`
`CASE ASSIGNED TO INTENT TO USE PARALEGAL
`
`Mar. 22, 2013
`
`TEAS STATEMENT OF USE RECEIVED
`
`Nov. 06, 2012
`
`NOTICE OF APPROVAL OF EXTENSION REQUEST E-MAILED
`
`Nov. 03, 2012
`
`EXTENSION 1 GRANTED
`
`Oct. 30, 2012
`
`EXTENSION 1 FILED
`
`Nov. 02, 2012
`
`CASE ASSIGNED TO INTENT TO USE PARALEGAL
`
`Oct. 30, 2012
`
`TEAS EXTENSION RECEIVED
`
`May 01, 2012
`
`NOA E-MAILED - SOU REQUIRED FROM APPLICANT
`
`Mar. 06, 2012
`
`OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED
`
`Mar. 06, 2012
`
`PUBLISHED FOR OPPOSITION
`
`Feb. 15, 2012
`
`NOTIFICATION OF NOTICE OF PUBLICATION E-MAILED
`
`Jan. 30, 2012
`
`LAW OFFICE PUBLICATION REVIEW COMPLETED
`
`Jan. 30, 2012
`
`ASSIGNED TO LIE
`
`Jan. 10, 2012
`
`APPROVED FOR PUB - PRINCIPAL REGISTER
`
`Jan. 07, 2012
`
`ASSIGNED TO EXAMINER
`
`Dec. 28, 2011
`
`NEW APPLICATION OFFICE SUPPLIED DATA ENTERED IN TRAM
`
`Dec. 20, 2011
`
`NEW APPLICATION ENTERED IN TRAM
`
`TM Staff and Location Information
`
`TM Staff Information - None
`
`File Location
`
`Current Location: PUBLICATION AND ISSUE SECTION
`
`Date in Location: May 02, 2013
`
`Proceeding
`Number
`
`70468
`
`66530
`
`66530
`
`66530
`
`76873
`
`76873
`
`76873
`
`70468
`
`70468
`
`82110
`
`

`

`EXHIBIT B
`EXHIBIT B
`
`

`

`
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`
`
`For use after Brow, Eyeliner, Lip. and Hairline Treatments.
`
`EverTrue Healing Serum calms the skin and Promotes accelerated healing of the
`
`treatment area, tor best color results. Key ingredients include Fibroblast Growth
`
`Factors that stimulate cellular growth. Proliferation. and healing; and Chamomile
`
`Oil as an antiseptic and anti—inflammatory.
`
`Directions tor use: Apply a thin layer gently twic-e a day with a cotton swab. Use
`
`tor seven days atter treatment or until treatment area completely Peels.
`
`Our serum is Provided tree oil: charge at inital treatment and all and ii month
`
`touch—ups, Additional vials available at $15.
`
`Elsi-True Praise-l in; Cream
`
`For use after Brow and Lip Treatments.
`
`EverTrue protecting Cream shields the treatment area against environmental
`
`stresses, allowing For tull healing and color Preservation. Key ingredients include
`
`Borneol. a Chinese herb that reduces swelling; and Sodium Hyaluronate For deep
`malsturizlng.
`
`Directions for use: Apply gently with a cotton swat: to Protect area against
`exposure to water. Use for seven days after treatment or until treatment area
`
`completely peels. The cream can also be: re—a-Ppli-ed on the treated area as needed
`
`throughout the day.
`
`Our cream is provided tree at charge at inital treatment and all 5 and 12 month
`
`touch—ups. Additional Product available at $15.
`
`.
`
`